- Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Nov 20, 2025 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–4 and 15–25 are unpatentable: claims 1–2 are anticipated by Trevarthen, and the challenged claims are also obvious over the listed combinations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4 and 15–25 (the “challenged claims”) of U.S. Patent No. 8,823,515 B2 (Ex. 1001, “the ’515 patent”). Paper 1 (“Pet.”). ST Reproductive Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 10, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-Reply (Paper 13, “Prelim. Sur-Reply”). Upon consideration of these filings and the preliminary evidence of record, we determined that Petitioner had demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims of the ’515 patent (Paper 16, “Institution Decision” or “Inst. Dec.”). Thus, we instituted review with respect to all of the challenged claims. slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“statistics in the absence of evidence of unique downloads or individuals. Even if the download numbers do not exactly represent unique downloads by unique individuals, the evidence shows that Trevarthen was downloaded, and therefore distributed, prior to the filing date of the ’515 patent. Accordingly, we find this evidence weighs in favor of Trevarthen’s public accessibility.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“retrieves sensed animal temperature information from the RFID device” and “further teaches that these temperature measurements are analyzed to detect ‘fluctuations,’ ‘a rise,’ and/or ‘anomalies’ that might indicate illness or oestrus.” Id. at 16 (citing Ex. 1005, 121–122). Accordingly, Petitioner asserts that a “POSA would understand that to perform such analysis, the animal temperature information for each animal is necessarily stored in the” slip op. at 36
- ExcludeMotion to exclude, deniedOther
“Patent Owner moves to exclude Exhibits 1040, 1041, and 1044. Paper 36. We do not rely on any of Exhibits 1040, 1041, and 1044 to decide this matter. Thus we dismiss Patent Owner’s motion to exclude as moot.” slip op. at 82
Patent outcomesUS 8,823,515 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - Google LLC v. DH International Ltd.InstitutedPTAB · Mar 24, 2025 · IPR2024-01322 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that claims 1, 10–12, and 19 are obvious over Mooney and over Mooney in view of Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, the Pre-Institution Reply, Pre-Institution Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’294 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’294 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“the claims nor the specification of the ’294 Patent require such a narrow reading of the term ‘activation cue’” as that proposed by Patent Owner. Reply 1 (citing Prelim. Resp. 9–10). Operative claim language—“a cue receiver operatively linked to said electronic circuit for receiving an activation cue from a source external to said cellular phone”—does not limit “activation cue” to a predetermined bit sequence or predetermined indicator as argued by Patent Owner. Claim 1 further recites the “data conveyance switching element . . . being assigned a first state upon an activation cue having been received by said cue receiver,” which also does not limit “activation cue” to a predetermined bit sequence or predetermined indicator. Both parties, moreover, cite the same description of the structure and function of the “activation cue” in the ’294 patent: “This activation cue is in the form of a data communication of a specific type which will be recognized by electronic device 10 as an activation cue, for example a predetermined bit sequence.” Prelim. Resp. 22 (citing Ex. 1001, 9:24–27); Reply 1 (citing Ex. 1001, 9:24–27); Sur-Reply 1 (citing same). The recited “activation cue,” when read in context and in view of the” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner constructionDecided for petitioner
“for the recited “data conveyance switching element” pursuant to §112, sixth Petition characterizes the corresponding structure as “a physical structure, a virtual program, or both because the ’294 patent explains that a switching element ‘can be any type of device allowing data to be conveyed according to alternate data conveyance operations,’ such as ‘a series of instructions programmed onto [a] microchip’ or a ‘decisional logical circuit,’ and ‘can be a physical structure, a virtual program, or both.’” Id. (citing Ex. 1001, 9:28– 31, 9:40–41; Lipoff Decl. Ex. 1003 ¶ 64). The Petition identifies the claimed function as switching between inactive and activated states based on whether or not the cellular phone receives an activation cue. Id. (citing Ex. 1001, 2:4–9, 4:18–23, 5:48–53; Ex. 1003 ¶ 64).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction of an “external data exchange device” as a data transceiver coupled to a circuit that carries out the function of exchanging data. Prelim. Resp. 11 (citing Ex. 1001, 9:4–6, 12:62, 13:28, Figs. 1, 3, 4; Ex. 2001 ¶ 48); see Pet. 7–8 (citing Ex. 1001, 2:14–17, 4:7–14, 9:3–6; Ex. 1003 ¶¶ 67–68). Patent Owner states that “[a]n external data exchange device is not a transceiver but a device with a transceiver.” Prelim. Resp. 11 (citing Ex. 2001 ¶ 48). On this preliminary record, we need not construe “external data exchange device” to decide whether or not to institute. To the extent there is a dispute over the plain meaning of “external data exchange device,” the parties are invited to address it in detail in their briefs following institution. On the present record, we determine that no further construction of claim terms is necessary to determine whether to institute a trial in this case. 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)). The parties are free to address any further claim construction issues bearing on this inter partes review following institution.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - PTAB · Feb 19, 2025 · IPR2024-01230 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–5 for all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“discretionary denial under § 325(d). The Notice Regarding Amendment Options explains that the Board may deny institution under § 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding. 84 Fed. Reg. at 16,657 (emphasis added). We find that the EPR is not in a more advanced stage as compared to this proceeding, and therefore does not weigh in favor of the Board exercising discretion to deny institution, despite its overlapping issues with those in the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–5 of the ’336 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“the art.7 On consideration of the record, specifically the patent and cited prior art, we find Petitioner’s proposed educational levels and subject matter (bachelor’s degree in electrical or mechanical engineering) more appropriate. Specifically, Patent Owner’s reference to a degree in computer science does not appear relevant to the claimed electro-mechanical device. We find Patent Owner’s proposed hands-on experience more persuasive as Petitioner’s definition is too vague (“generally familiar”) to assist our determination. On this record and for the purposes of institution, we find that a person of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, would have a bachelor’s degree (or equivalent) in electrical engineering or mechanical engineering, and would have two years of experience in designing and/or implementing hardware components for computers, servers, and/or other electronic devices. We further determine that more experience could compensate for the absence of a bachelor’s degree. The level of skill is reflected by the testimony of the parties’ declarants and the prior art of record.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We determine that the plain meaning of claim 1 supports Patent Owner’s interpretation. Claim 1 recites a body, provided with a fan in center of the body, an illumination area on at least two sides of the fan at top of the body, a power socket and a first connector on one side of the body, and a second connector on another side of the body . . . such that when the power socket on the one side of the body is supplied with power, the fan and the illumination area of the body are respectively driven into rotation and illumination . . . Ex. 1001, 4:5–9 (emphasis added). Claim 1 expressly recites three body locations: “the top of the body,” “one side of the body,” and “another side of the body.” Id. “A power socket and a first connector” are listed together in the same clause “on one side of the body.” Id. The plain language of the claim further supports that “one side of the body” includes both power socket and first connector, as the limitation is repeated later in the claim: “the power socket on the one side of the body.” See id. at 4:12 (emphasis added). The location of the second connector is defined in relation to the one side with the first connector. See id. at 4:5–9. Accordingly, the plain meaning of claim 1 defines three sides of the claimed body, a top of the body (with an illumination area on two sides of the fan), one side of the body with a power socket and a first connector, and another side of the body with a second connector. See id. For purposes of this Decision, we determine that no other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly necessary to resolve the controversy.”)).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,690,336 - PTAB · Feb 4, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that Thurler anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had a relevant technical degree in 5 At this stage of the proceeding, the parties have not directed us to any such objective evidence. Mechanical Engineering, Fluid Engineering, or the like, and 2-3 years of experience researching, designing, manufacturing, or assessing [energy suppression devices (“ESD”)], though less education may be sufficient with additional experience, and vice versa.” Pet. 1. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Thus, both the ’750 patent and its prosecution history support Petitioner’s contention that a “radially serpentine” fluid flow is one in which the fluid flows back and forth around a radius of the off axis chamber. We see no support, however, for Petitioner’s assertion that a serpentine flow requires two or more changes of direction. See Pet. 17. Petitioner states that “‘back and forth’ movement requires at least two changes in direction. Specifically, to come ‘back,’ an object must have first gone ‘forth.’” Pet. 17; see also Ex. 1013 ¶ 130 (presenting essentially identical assertions). However, both Petitioner and its witness, Mr. Nixon, identify only a single change in direction – from “forth” to “back.” Neither Petitioner nor Mr. Nixon provide any support for their assertions that two changes of direction are required, and we decline to adopt this aspect of Petitioner’s interpretation of “radially serpentine.” Instead, we interpret “back and forth,” as used in the ’750 patent, to be satisfied by only a single change in direction.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We disagree with Petitioner’s interpretation of Superguide. There, the Federal Circuit “conclude[d] that the plain and ordinary meaning of . . . the phrase ‘at least one of’ means ‘one or more.’” Superguide, 358 F.3d at 886 (citing Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)). The court then considered what the phrase modified and determined that, because “[t]he phrase ‘at least one of’ precedes a series of categories of criteria, and the patentee used the term ‘and’ to separate the categories of criteria,” the phrase “connotes a conjunctive list” and required selecting at least one value for each category. Id. (emphasis added). For example, in SuperGuide, the claim phrase “storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type” was interpreted as requiring storing at least one desired program start time, at least one desired program end time, and so forth. Id. at 884, 886. Neither courts nor the Board has interpreted SuperGuide as setting forth a per se rule that the use of “at least one of” followed by “and” necessarily connotes a conjunctive list, and both courts and the Board have found SuperGuide inapplicable when the listed items following “at least one of” are not categories containing many possible values. See Apple Inc. v. CPC Patent Techs. PTY, Ltd., IPR2022-00601, Paper 31 at 28 (PTAB Sept. 27, 2023) (collecting cases). Here, Petitioner does not persuade us that “axially serpentine” and “radially serpentine” are categories. Notably, for each of these terms, both Petitioner and Mr. Nixon provide only a single example of such a fluid pathway. See Pet. 18; Ex. 1013 ¶ 134. Such identification of only a single instance does not persuade us that these terms identify categories of criteria. See Superguide, 358 F.3d at 886 (“Each category is further comprised of many possible values.”). Accordingly, for the foregoing reasons and on this preliminary record, we interpret “at least one of” as recited in the claims of the ’750 patent to have its plain and ordinary meaning of one or more.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - PTAB · Jan 28, 2025 · IPR2024-01084 · APJ Jeffrey S Smith · IPR · Institution
Instituted IPR on claims 1–4, 8–18, 22–30, and 34–39; Petitioner showed a reasonable likelihood that Shiplacoff, alone or combined with Nan, renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution, we are sufficiently persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that Shiplacoff renders obvious claim 1.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). With respect to the first issue, previously presented art includes, among other things, “art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. With respect to the second issue, institution generally will be denied if a “petitioner fails to make a showing of material error,” and “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reasons to Combine Shiplacoff and Nan Petitioner contends that a person of ordinary skill in the art would have implemented the touch gestures of Nan in Shiplacoff’s device that includes a touch screen for the benefits of avoiding latency and not displaying on-screen controls. Pet. 43–44. Petitioner contends that using the gestures of Nan, which include factors such as length, speed, hold time, and number of fingers, to execute a change from one of Shiplacoff’s display modes to another, does no more than yield predictable results. Id. at 43, 45. We are sufficiently persuaded that Petitioner has shown a reason to use the edge gestures of Nan to switch from one of Shiplacoff’s display screens to another.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof. Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner’s declarant, Loren Terveen, Ph.D., testifies that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 22. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 7.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,649,578 - PTAB · Jan 28, 2025 · IPR2024-01083 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7, 9, 10, and 101 on the asserted §103 ground over Ahn, Chaudhri, and Hinckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–3, 7, 9, 10, and 101 of the ’413 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 30. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 6. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner and Patent Owner contend that no claims need to be construed in order to resolve a controversy. Pet. 4– 5; Prelim. Resp. 6–7. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial. We highlight that for the term “a magnitude of the blurring,” Patent Owner contends that “the amount of surface area that a translucent menu is displayed over a screen is not a magnitude of the blurring,” but provides no further construction of the term, other than a statement that even under Petitioner’s interpretation of “blurring,” the grounds are deficient. Prelim. Resp. 32–33 & n.4. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we apply this proposed construction of “a magnitude of the blurring” as discussed below in our analysis of limitation [1.d.ii]; the construction of this term may be addressed by the parties as this inter partes review proceeds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,642,413 - PTAB · Jan 27, 2025 · IPR2024-01085 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Davis indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr. Cockburn. Ex. 2001 ¶ 24 (citing Ex. 1003 ¶ 26). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the level reflected by the ’580 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Similarly, Patent Owner indicates that no formal constructions are necessary at this point in the proceeding. Prelim. Resp. 3. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “Petitioner’s alleged motivation for modifying Ramos’ Zlider to be transparent is superficial and conclusory.” Prelim. Resp. 24; see generally Prelim. Resp. 24–26. As noted above, Petitioner relies on evidence from Ording itself and Dr. Cockburn’s testimony that relies on evidence to support its conclusion. Thus, we do not agree with Patent Owner that Petitioner’s motivation is insufficient for institution. Patent Owner also argues, relying on Dr. Davis’ declaration testimony, that the Vernier on a semitransparent Zlider widget would be “completely illegible” in some circumstances “rendering the very core of Ramos’ work unusable.” Prelim. Resp. 24–25 (citing Ex. 2001 ¶ 88); see Ex. 2001 ¶ 88 (not adding reasoning or evidence beyond that in the Patent Owner Preliminary Response). On this preliminary record, it would appear that when the Zlider widget and the portion of the image underlying the Zlider widget are the same color, the semitransparent Zlider widget may not work as well as when the Zlider widget and the underlying image are different colors. That does not outweigh, for purposes of determining whether to institute trial, the prior art evidence that Petitioner offers of the from Ording and other prior art references on which Dr. Cockburn’s declaration testimony relies. Ex. 1003 ¶ 66 (citing Ex. 1025 ¶¶ 77, 94, 101; Ex. 1026 ¶¶ 153, 162); see Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799– 800 (Fed. Cir. 2021) (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option, rather than a showing that it is the best option). Petitioner also contends, relying on declaration testimony from Dr. Cockburn, that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 33–34. Petitioner contends that implementing the Zlider widget “described in the Ramos Paper and Ramos Video in a device, as taught by Ording, would have required only routine knowledge well within the skill of a POSITA” and would involve “combining prior art elements according to known methods to yield the predictable results” described by Petitioner’s proposed combination of the references. Id. (citing Ex. 1003 ¶ 67). Petitioner’s support for reasons one of ordinary skill would have made” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,649,580 - PTAB · Jan 22, 2025 · IPR2024-01090 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–3, 21, 29–31, 42–44, 54, and 62–65 based on the §103 combination of Blumenberg, Bhumkar, and Griffin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Patent Owner may bear a burden of production, however, to show that the Challenged Claims are entitled to the benefit of an earlier filing date. Id. at 1379–80.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we preliminarily agree with Petitioner that the claim limitations amount to a combination of known elements that a POSITA could have combined to achieve predictable results. See Intel, 21 F.4th at 799–800 (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option). Among other reasons, the preliminary record supports Petitioner’s arguments that combining the teachings of Blumenberg, Bhumkar, and Griffin amounts to applying known solutions in the field of computer interfaces with predictable outcomes. See Pet. 12–18. As noted above, we encourage the parties to address the scope and meaning of the “when” limitations as a matter of claim interpretation, but we do not currently understand the plain language of Limitation [1.o] to require that the “portion of the second web page” or “menu” is displayed only after expiration of the “second user-configurable predefined duration,” termed by Patent Owner the “Alternative Modification.” Again, we encourage the parties to fully address this issue as a matter of claim construction. We additionally note that, even if we were to interpret the claims to require that the recited functions of Limitation [1.o] occur only the “prerequisite elements” are satisfied, we are still preliminarily persuaded by Petitioner’s arguments that combined teachings of the prior art satisfy the claim elements as a mere combination of known elements combined according to their known functions with predictable results.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“scenarios. Pet. 1 (characterizing three claimed scenarios as (i) an “inadvertent” contact, (ii) a “tap” contact, and (iii) a “hold” contact), 4 (“Independent Claims 1 and 42 outline three scenarios regarding a user’s contact with a touch screen device”); Prelim. Resp. 3 (“With respect to claim 1, these three scenarios include: . . . .”); see Ex. 2001 ¶¶ 28 (“As recited in claim 1, the three different claimed functionalities are executed ‘when’ the prerequisite elements are met (described as three scenarios by Dr. Cockburn.”) (citing Ex. 1001, 102:50–103:55; Ex. 1003 ¶¶ 33–35), 29–32 (describing the first, second, and third scenarios). In substance, the parties’ dispute appears to concern whether the plain language of the claims requires that a recited function must be performed only after or in response to expiration of a threshold (and other prerequisites), as opposed to requiring a function that begins before and continues after expiration of a threshold. Notably, dependent claim 3 recites: “The electronic device of claim 1, wherein the electronic device is configured such that the first feedback that is perceptible by touch is output prior to the display of the menu.” Ex. 1001, 104:1–4 (emphasis added). Given that independent claim 1 is necessarily broad enough to include claim 3, it seems on this record that the functions recited in Limitation [1.o] necessarily can happen at different times, as opposed to, for example, only responses that are triggered by the so-called “prerequisite elements.” We encourage the parties to address this issue as a matter of claim interpretation in future briefing. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,725,581 - PTAB · Jan 21, 2025 · IPR2024-01067 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 5–7, 9, and 10 for all petition grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board may not authorize an inter partes review to be instituted unless the information presented in the petition and any response shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 5–7, 9, and 10 of the ’644 patent, based on all of the grounds identified in the Petition. We do not institute review of disclaimed claim 13. Infra Section III.A; 37 C.F.R. § 42.107(e) (2023).” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“(citing Ex. 2004). Our rules explain: “The patent owner may file a statutory disclaimer,” and “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). Patent Owner filed a statutory disclaimer on October 24, 2024. Ex. 2004. A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the disclaimer must: (1) Be signed by the patentee, or an attorney or agent of record; (2) Identify the patent and complete claim or claims, or term being disclaimed. . . .; 3) State the present extent of patentee’s ownership interest in the patent; and (4) Be accompanied by the fee set forth in [37 C.F.R.] § 1.20(d). 37 C.F.R. § 1.321(a); see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1382 (Fed. Cir. 1998) (holding § 253 disclaimer is immediately “recorded” on date the USPTO receives a disclaimer meeting the requirements of § 1.321(a), and no further action is required in the USPTO). Patent Owner’s filing of Exhibit 2004 appears to meet these requirements.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in electrical engineering or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. (emphasis added). Patent Owner does not contest Petitioner’s characterization at this time. See Prelim. Resp. 29 (citing Ex. 2001 ¶¶ 19– 20). On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’644 patent and the prior art of record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), i.e., as construed in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Neither party seeks a specific claim construction or definition for any claim term. See Pet. 10; Prelim. Resp. 29. For purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,231,644 - PTAB · Jan 17, 2025 · IPR2024-01089 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1, 2, 9–11, 13–16, and 56–64 and 84, finding a reasonable likelihood of unpatentability under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” (Pet. 6) appears to be consistent with the problems and solutions in the ’212 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’212 patent.” Pet. 7.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, we determine, on the present record, that Petitioner has not improperly combined embodiments of Hotelling. Petitioner sufficiently shows that Hotelling describes a device which is “designed to recognize touch gestures applied to a touch screen” and which “recognizes the occurrence of gestures” and informs associated software agents of “the ¶ 135 (cited at Pet. 9, 24, 35). While Hotelling’s disclosed example of a touch vocabulary relates to the music player embodiment (Ex. 1004 ¶ 151, Figs. 27A–E), Hotelling generally teaches “[a] hand-held electronic device . . . designed to recognize touch gestures applied to a touch screen” and which upon receipt of gestures “executes instructions to carry out operations associated with the gestures.” Ex. 1004 ¶ 135 (cited at Pet. 8, 9, 24, 35). After considering Hotelling and the parties’ arguments and testimony, we determine that, on the present record, Petitioner has sufficiently shown that Hotelling’s general teachings regarding gestures received on a touch screen includes the recognition of touch gestures (pressing a button, sliding a finger or stylus, moving the entire device spatially) while Hotelling’s main page is being displayed. Ex. 1004 ¶¶ 84, 85, 87; Ex. 1003 ¶¶ 64–66. While we agree that the “touch vocabulary” provided in the “example” of Figures 27A-E (see Ex. 1004 ¶ 151) relates to a music player, we do not, on the present record, determine that Hotelling limits its disclosed recognition of touch gestures and execution of instructions to carry out operations associated with the gestures (including via a touch vocabulary) as relating only to the music player or to the other specific functionalities of the device, rather than to all user input GUIs.” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,671,212
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.