• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,123,074
• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.No claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01223 · APJ Garth D Baer · IPR · Final written decision

  Claims 34–37 and 40–46 were not shown unpatentable because Suzuki’s organic barrier layer was not shown to meet the agreed construction of “planarization layer.”

  RulingsFinal written decision

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

    “layer of material that planarizes such that the propagation of defects from one layer to another layer can be interrupted and the topography of the underlying layer and/or structure is not reproduced.” PO Resp. 10. According to Patent Owner, we should adopt this construction because the parties agreed to it in a related district court proceeding and it is supported by the intrinsic evidence. Id. at 10–14. Petitioner does not dispute this 1 Japanese Published Application No. H09-245964, Pub. Sep. 19, 1997 (Ex. 1010, “Kijima”) (English translation). 2 US 6,198,217, Pub. Mar. 6, 2001 (Ex. 1012, “Suzuki”). 3 US 6,087,196, Pub. July 11, 2000 (Ex. 1013, “Sturm”). 4 WO 2001/08242, Pub. Feb. 1, 2001 (Ex. 1016, “Duthaler”). 5 Japanese Published Application No. H10-41069, Pub. Feb. 13, 1998 (Ex. 1014, “Fujimori”) (English translation). construction. Paper 33, 6:17–8:1; see Pet. Reply 5. We adopt the parties’ agreed-to construction.” slip op. at 4

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

    “Petitioner argues Suzuki’s organic barrier layer does not reproduce the underlying layer’s/structure’s topography because “Suzuki’s organic barrier layer 20 ‘makes a smooth surface on the relatively irregular surface of the cathode 18.’” Pet. Reply 7 (quoting Ex. 1012, 5:59–67). We disagree. Instead, we agree with Patent Owner that Suzuki’s irregular-surface smoothing describes covering defects, not suppressing the underlying cathode’s topography. PO Sur-reply 5. The smooth-surface passage that Petitioner highlights comes immediately after two sentences describing inevitable “defects,” “pinholes,” and “foreign matter” on the cathode surface and before a sentence describing “ensuring the formation of the layer 22, which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “G. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. We agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 9

  Patent outcomesUS 6,949,389 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,949,389
• Duration Media LLC v. Rich Media Club LLCNo claims unpatentable
  PTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19

  • Strike new argumentNew argument disregardedGranted

    “Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25

  Patent outcomesUS 11,443,329 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,443,329
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · May 31, 2024 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–15 and 17–18 were not shown unpatentable because the prior art did not disclose a “pre-set UE number” under the adopted construction.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We are not persuaded to maintain our preliminary construction. Indeed, as already noted, Petitioner does not argue for the preliminary construction. Neither does Petitioner question the validity of the reasons given for the District Court’s construction. Rather, Petitioner repeats its position that it “takes no position on the District Court’s construction” and Petitioner does not have any reason “as to why that construction is wrong or right.” Tr. 18:24–19:6. We do not see any reason to construe “pre-set UE number” contrary to what the District Court has determined. Indeed, we find the District Court’s analysis of the issue highly persuasive and adopt it as our own. And Petitioner has not provided any argument regarding construction of the term, simply taking no position on its correctness.” slip op. at 12

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

    “Petitioner has forfeited the indefiniteness argument. Regardless, we are given no reason to find construction of the two means-plus function terms impossible given the District Court determination. We agree that the scope of the terms is based on a means-plus function analysis. We are not persuaded that structure is not sufficiently described.” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues that this argument was not presented in the Petition and is too late and/or incorrect. Sur-reply 5. We agree with Patent Owner. Neither Patent Owner nor the Board were given any notice of this argument in the Petition. Regardless, we find no merit in Petitioner’s argument. Fundamentally, our jurisdiction regarding patentability is limited to Sections 102 and 103 of the Patent Act. 35 U.S.C. § 311(b). We do not find that claim 18 is so indefinite that a patentability determination is impossible. See Intel Corp. v. Qualcomm Inc., 21 F.4th 802, 812–813 (Fed. Circ. 2021) (claim construction obligation “does not mean that the Board must reach a determination of the patentability of a claim on the presented prior-art grounds if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”). Indeed, the District Court determined that the corresponding structure is a processor programmed to either (1) descramble a Cyclic Redundancy Check (CRC) of Downlink Control Information (DCI) for scheduling the RAR according to a pre-set RA-RNTI or an RA-RNTI corresponding to the preamble, and receive the RAR, the RAR including at least one TCRNTI and/or at least one Uplink (UL) grant. Ex. 2008, 23 (quoting Ex. 1001, 2:66–3:4). (2) determine corresponding RA-RNTIs according to respective IDs and/or preambles, descramble a CRC of DCI for scheduling the RAR according to the corresponding RA-RNTIs, and receive corresponding RARs, the RAR including a TCRNTI and/or a UL grant allocated to the first UE or second UE.” slip op. at 13

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

    “Our construction of “pre-set UE number” is dispositive of this proceeding. See Section III.B.1 above. Petitioner agrees that both Li and Kim “don’t disclose that the message 3 includes a ‘pre-set number of UEs’” under our final construction of “pre-set UE number.” Pet. Reply 4; see also Tr. 7:20–22 (“Under [the District Court] construction, Li and Kim would not disclose Claim 1, at least Claim 1, of the ’430 patent”); 11:3–17 (Petitioner’s counsel arguing claim 18 is indefinite but agreeing neither claim 1 nor 18 have been shown unpatentable under the District Court construction of “preset UE number”). For the reasons set forth above, Petitioner has not shown a by a preponderance of the evidence that claims 1 and 18 are anticipated by Li.” slip op. at 18

  Patent outcomesUS 10,448,430 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,448,430
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00398 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–22 were not shown unpatentable as obvious over Dill, Vadhri, and Akashika because Dill was not shown to disclose the claimed Integration Tier Limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s undisputed formulation of ordinary skill in the art as set forth above, because we are satisfied this formulation generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. We do not adopt Patent Owner’s annotation to Petitioner’s formulation as requiring knowledge of “mobile wallets” specifically, because we determine knowledge of “mobile payment systems and techniques” per Petitioner’s formulation is tied sufficiently to the claims of the ’196 patent to reflect the level of ordinary skill in the pertinent art. At the same time, even if we were to include knowledge of “mobile wallets” in our formulation, it would not materially change our Decision as set forth below. That is, we would still determine Petitioner has not shown by a preponderance of the evidence that Dill discloses the Integration Tier Limitation.” slip op. at 10

  • Expert testimonyNot reached

    “We need not resolve the parties’ dispute as to whether Dr. Houh qualifies as an ordinarily skilled artisan. Even assuming that Dr. Houh possesses, at a minimum, ordinary skill in the art—as we have done in this Decision—we determine Petitioner still fails to show that any of the challenged claims are unpatentable.” slip op. at 12

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

    “The Integration Tier Limitation requires no further construction for purposes of this proceeding. See Pet. Reply 7 (“[N]o specific construction is required.”). The claim clearly specifies that the claimed “web services communication mechanisms” must serve as an interface between the integration tier and (1) the claimed mobile wallet application and, separately, (2) “a plurality of different device types over a plurality of different communication channels.” For purposes of this Decision, we assume that this interface may be direct or indirect. See id. at 6 (asserting that “communication channels that interface, even indirectly, with the ‘web services communication mechanisms’ still interface with the ‘web services communication mechanisms’”).” slip op. at 28

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

    “However, we find that of those four channels (1)–(4), only the first channel (1) is associated with web interface 137 such that it qualifies as a “communication channel,” as required by claim 1. There is no indication in the Dill disclosures cited by Petitioner that any of the other three channels (2)–(4) are associated with web interface 137. For example, Figure 9 of Dill includes a double-headed arrow to illustrate communication between web interface 137 and transfer options module 145, but Figure 9 does not include any arrows to illustrate communication between web interface 137 and any one or more of IVR interface 136, other interfaces 138, agent system 135, or mobile network 115. See Ex. 1005, Fig. 9. In other words, Petitioner fails to show Dill teaches web interface 137 interfaces with any devices over any of channels (2)–(4), as would be required by Petitioner’s mapping. In the Petition, Petitioner never clearly (or persuasively) addresses this requirement of the claim. Petitioner does contend that transfer options module 145 is coupled to various devices via interfaces 136–138 and exchanges transaction information (see Pet. 25–26; see also Pet. Reply 10– 11), but that contention misses the mark. The salient question is whether Dill’s web interface 137 (i.e., the claimed “web services communication mechanisms”) interfaces with the different device types over the channels, not whether transfer options module 145 (i.e., the claimed “integration tier”) does so.” slip op. at 30

  Patent outcomesUS 10,438,196 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,438,196
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we determined that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27

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

    “for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13

  • BurdenNot shown unpatentable

    “Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22

  Patent outcomesUS 9,208,488 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,208,488
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · Mar 29, 2024 · IPR2022-01598 · APJ Gregg I Anderson · IPR · Final written decision

  The Board held claims 1, 2, 6, 8–11, 15, 17, and 18 not shown unpatentable over Kannan because Kannan did not disclose the construed transmission blocks.

  RulingsFinal written decision

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

    “We are not persuaded that “single entity” requires a separate construction or additional clarification, presumably by “testimonial evidence.” See Pet. Supp. Br. 4 n.1. Here, we need not determine the precise outer bounds of the term “transmission block,” including all the different types of single entities, because the Board is required to construe the claim to only the extent necessary to resolve the dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The relevant context for understanding what is a single entity is the disclosures of Kannan and the ’443 patent regarding “code block,” “transport block,” and “transmission block.” Those are the “single entities” and are the focus of the dispute. For the preceding reasons we adopt our preliminary construction of “transmission blocks” as our final construction. No additional terms are in dispute that require construction.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’443 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology.” Pet. 3–4 (citing Ex. 1003 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill and “takes no position with respect to Petitioner’s proposed level of ordinary skill in the art” because “it does not affect the ultimate analysis.” PO Resp. 11–12. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’443 patent. The proposed level of skill is consistent with the field of the invention as indicated by the cited prior art.” slip op. at 7

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Kannan is based on the OSI model and describes control and data transmission on the MAC and PHY layers. Ex. 1006 ¶ 63. Kannan explains that “[w]ireless devices may exchange data using Medium Access Control (MAC) layer units known as transport blocks that may include a number of CBs.” Id. ¶ 8. Further, at the PHY layer, “a transport block may be divided into CBs.” Id. ¶ 52. Kannan continues to describe that “code blocks” “may be bundled into multiple bundles having a certain number of CBs.” Id. These parts of Kannan support the Akl Rebuttal Declaration conclusion’s regarding the OSI model in Kannan. Ex. 2007 ¶¶ 31–37, 49–50. Thus, we credit the Akl Rebuttal Declaration on this issue (id.) over Dr. Ding’s testimony (Ex. 1016 ¶ 13) because it is better supported by Kannan. Based on the preceding, we find that “code blocks” on the PHY layer are found only with “transport blocks” and are not a “separate entity.” See PO Supp. Br. 2.” slip op. at 21

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

    “Kannan is based on the OSI model and describes control and data transmission on the MAC and PHY layers. Ex. 1006 ¶ 63. Kannan explains that “[w]ireless devices may exchange data using Medium Access Control (MAC) layer units known as transport blocks that may include a number of CBs.” Id. ¶ 8. Further, at the PHY layer, “a transport block may be divided into CBs.” Id. ¶ 52. Kannan continues to describe that “code blocks” “may be bundled into multiple bundles having a certain number of CBs.” Id. These parts of Kannan support the Akl Rebuttal Declaration conclusion’s regarding the OSI model in Kannan. Ex. 2007 ¶¶ 31–37, 49–50. Thus, we credit the Akl Rebuttal Declaration on this issue (id.) over Dr. Ding’s testimony (Ex. 1016 ¶ 13) because it is better supported by Kannan. Based on the preceding, we find that “code blocks” on the PHY layer are found only with “transport blocks” and are not a “separate entity.” See PO Supp. Br. 2. Thus, Petitioner has not shown that claims 1, 8, 10, and 17 are unpatentable by a preponderance of the evidence.” slip op. at 21

  Patent outcomesUS 10,594,443 not shown unpatentable
  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,594,443
• Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentable
  PTAB · Feb 20, 2024 · IPR2022-01283 · APJ Monica S Ullagaddi · IPR · Final written decision

  The Board held claims 1–63 not shown unpatentable under either §103 ground because Petitioner did not sufficiently support the asserted digital mapping and delta limitations.

  RulingsFinal written decision

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

    “Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge. Petitioner’s obvious-to-try rationale is insufficient to show that a person of ordinary skill would have used a digital-to-digital-mapping in which there are regions in which the deltas are both decreasing and increasing. Moreover, Petitioner’s Reply includes positions not supported by a Reply Declaration from Dr. Blumenthal and thus, constitute attorney argument that is not sufficiently supported by evidence. See, e.g., Pet. Reply 14–15 (Petitioner arguing “Roberts’ design obviates the need for a separate,” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Inst. Dec. 35 (citing Ex. 1006, 8:2, 8:8). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’998 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:64–2:36) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 3001, 172).6 We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’998] patent would understand that th[e] [claimed] approach of mapping, based on the converter output pattern differs 6 Ex. 3001 is a portion of the prosecution history of U.S. Patent No. 11, 133, 872, a parent of the ’998 patent. Ex. 2022 ¶ 34 (citing Ex. 1001, 2:5–9 (’998 patent disclosing common, prior art solutions such as “an analog pre-distortion circuit to feed the modulator”); Ex. 1005, 2:53; Ex. 1006, 7:67–8:5, Fig. 6); Ex. 1001, 2:35– 37(the ’998 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the parent ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts,” which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended claims, as the ’998 Patent itself admits.” Id. ¶ 79 (citing Ex. 1001, 2:5–9; Ex. 2009, 2; Ex. 1010, 16–48). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 3001, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’998 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 34

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

    “limitation 1.9. This is because the idealized sinusoidal curves that form the basis of Dr. Blumenthal’s analysis lack a sufficient showing of relevance to the teachings of Taraschuk cited by Petitioner. Patent Owner persuades us that Petitioner does not point to any basis for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 1.8 and 1.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 1.8 and 1.9. Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two,” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “IV. MOTION TO EXCLUDE Patent Owner requests that we exclude Petitioner’s Exhibits 1031 through 1038 submitted with Petitioner’s Reply. Paper 25, 1. Petitioner opposes. Paper 27. As we do not rely on any of these exhibits in rendering the findings and conclusions in this Decision, Patent Owner’s motion is moot.” slip op. at 40

  Patent outcomesUS 11,342,998 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,342,998
• Apple Inc. v. LBT IP I LLCNo claims unpatentable
  PTAB · Dec 15, 2023 · IPR2020-01189 · APJ John A Hudalla · IPR · Remand

  Claims 8, 10, 13, and 15 were not shown unpatentable because Sakamoto discloses only two battery power thresholds, which do not meet the construed multitude limitation.

  RulingsRemand decision

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

    “threshold values” includes GPS signal level thresholds, we start with the words of claim 8. Claim 8 recites a “battery power level monitor” that (1) “measures a power level of the charging unit” and (2) “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels.” Claim 8 further recites that “the power level compris[es] a multitude of threshold values determined by a user or system administrator.” The remainder of claim 8 states the purpose of the “multitude of threshold values,” which is “to intermittently activate or deactivate the location tracking circuitry to conserve power of the charging unit in response to the estimated charge level of the charging unit.” The natural reading of these recitations is that the “power level” associated with the “multitude of threshold values” is the battery power level that is (1) measured by the battery power level monitor and (2) adjusted by the battery power level monitor and applied to location tracking circuitry. We also note that the claim language already incorporates a limitation directed to “signal levels” insofar as the battery power level monitor “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels” (emphasis added). As such, the limitation “one or more signal levels” is recited separately from the limitation “the power level comprising a multitude of threshold values.” Given “[t]he general presumption that different terms have different meanings,” Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012), we ascribe different meanings to the recited “signal levels” and “power level.”” slip op. at 15

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

    “the battery power thresholds between (1) high and normal sensitivity positioning modes and (2) normal sensitivity positioning mode and turning off power to the GPS receiver) and Sakamoto’s two GPS signal level thresholds (i.e., K1 and K2) for teaching “the power level comprising a multitude of threshold values.” Pet. 50–51; Pet. Reply 16–18. As discussed above, however, “the power level comprising a multitude of threshold values” refers to battery power level thresholds. See supra § II.C.2. We also determine above that signal level threshold values are not within the scope of “the power level comprising a multitude of threshold values.” See id. Accordingly, we are not persuaded that Sakamoto’s GPS signal level thresholds K1 and K2 teach the recited power level threshold values. Although Petitioner is correct that “Sakamoto uses the same modes with both sets of thresholds” and that both sets of thresholds might ultimately relate to conserving battery power (see Pet. Reply 17 (citing Ex. 1003 ¶ 58; Ex. 1004 ¶¶ 27–29)), we are not persuaded that these different types of thresholds are interchangeable within the scope of “the power level comprising a multitude of threshold values.” This is particularly true given that Petitioner already relies on Sakamoto’s GPS signal level thresholds K1 and K2 for teaching another aspect of claim 8, i.e., “responsive to one or more signal levels.” See Pet. 49–50. For these reasons, Petitioner has only established that Sakamoto teaches two battery power level thresholds within the scope of “the power level comprising a multitude of threshold values.” Because two threshold values are not a “multitude” (see supra § II.C.1), we find that Petitioner has not established that Sakamoto teaches “the power level comprising a multitude of threshold values,” as recited in claim 8. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claim 8 would have been obvious over Sakamoto. 3. Claims 10, 13, and 15 Claims 10, 13, and 15 each depend from claim 8. Ex. 1001, 17:4–10, 17:23–25, 17:29–33. Petitioner’s analysis for these claims does not cure the deficiencies discussed above with respect to claim 8. See Pet. 54–55. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claims 10, 13, and 15 would have been obvious over Sakamoto.” slip op. at 31

  • BurdenNot shown unpatentable

    “III. CONCLUSION Petitioner has not shown, by a preponderance of the evidence, that (1) the subject matter of claims 8, 10, 13, and 15 would have been obvious over Sakamoto; (2) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and AAPA; or (3) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and Hayasaka.” slip op. at 33

  Patent outcomesUS 8,497,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,774
• Cerebras Systems Inc. v. Rex Computing, IncNo claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00741 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–19 were not shown unpatentable under § 103 because the cited combinations failed to teach required router retention, scratchpad memory, or optimal square-versus-linear tile assignment limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time the ’975 patent was filed. Pet. 6. Relying upon the Conte Declaration, Petitioner asserts a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or a related subject matter, plus at least two years of professional experience in the field of microprocessor design or a similar field . . . and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 27–30). Patent Owner applies this 2 Patent Owner does not identify any secondary considerations to be considered. assessment in its Response. Resp. 8. Based on the fully developed record, we accept the assessment offered by Petitioner because it is supported by the Conte Declaration and is consistent with the ’975 patent and the asserted prior art.” slip op. at 8

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

    “[W]e need only construe terms ‘that are in controversy, and 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)). We determine that no constructions are required for the above-disputed terms. slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner

    “above-described manner to store data. But Dr. Conte’s direct testimony does not address other statements in the ’975 patent specification that describe the scratchpad memory as an alternative to a cache. See Ex. 1001, 8:27–33 (“each of the cores includes a scratchpad memory . . . . As a result, conventional L-level caches may not be used in the architecture 299 because the scratchpad memories . . . provide data storage”); see also id. at 3:21–4:35 (describing drawbacks of prior art architectures that rely on caches), 5:14–20 (stating that each core may include a scratchpad memory instead of a cache). As Dr. Bagherzadeh stated, “Dr. Conte never reconciled [his] opinion with the ’975 Patent’s disclosure, which, as I described, connects the concept of using a scratchpad memory to a cache-less architecture.” Ex. 2001 ¶ 92 (citing Ex. 1001 Fig. 3). Dr. Conte’s deposition testimony did not clarify this issue, stating that the issue of cacheless architecture was “disconnected” from whether a microprocessor has a scratchpad. Ex. 2002, 40:10–15. The ’975 patent specification’s description of a scratchpad memory module as an alternative to cache memory is evidence that an ordinary artisan, upon reading the entirety of the ’975 patent, would not have considered the scope of the claimed scratchpad memory to include a cache memory. Dr. Conte has relied upon the ’975 patent specification for general properties seemingly common to both caches and scratchpad memory, but has not explained why the ’975 patent specification’s statements distinguishing a scratchpad memory from a cache should not limit the scope of the claimed “scratchpad memory.” As a result, Dr. Conte’s testimony does not significantly assist in construing “scratchpad memory” in any manner relevant to the pertinent issue; i.e., whether it may be taught by a prior art cache memory.” slip op. at 30

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

    “data “occurs in the router’s input buffer” (Pet. Reply 10 (emphasis added)), but Petitioner does not support this assertion with analysis or evidence. To the contrary, Petitioner has clarified that the “input” on which words wait is “the input of the processor,” not the router. Pet. Reply 12. Claim 1 requires that a router must be operable to retain such data (limitation [1g]), and that the processor cores are distinct from the routers (limitation [1a]). Thus, to the extent that MIT2002 teaches data waiting at the input of the processor, Petitioner has not pointed to evidence or reasoning persuasively showing that the claimed router is operable to retain a data packet, even if a buffer at the input of the processor is able to do so. Instead, Petitioner primarily relies on our preliminary determination, and on Patent Owner’s lack of argument to the contrary. Id. at 11–12. Neither of these act to satisfy Petitioner’s burden to show that MIT2002, in combination with the other applied references, teaches a router operable to retain data packets in the event of a traffic condition. Consequently, we are not persuaded that retention of data in the Raw system occurs at the router’s input buffer. For the above described reasons, we determine that Petitioner has not shown by a preponderance of evidence that the combined teachings of the applied references of this ground teach or suggest the “each router is operable to retain a data packet in the event of a traffic condition” limitation of [1g]. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious.” slip op. at 24

  Patent outcomesUS 10,355,975 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,355,975

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.