• Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11

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

    “We determine that no construction of “virtual timeline” is necessary. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13

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

    “On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14

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

    “server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34

  Patent outcomesUS 11,991,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,991,234
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-00988 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4–10, 13, and 15 are unpatentable over Phan; claim 2 was not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “experience or over 30 years of experience, for example. In addition, the ’683 patent is directed to “a pixel arrangement structure of an organic light emitting diode (OLED) display” (Ex. 1001, 1:19–21), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Invention” section, Phan states that “[t]he invention [of Phan] relates to a display comprising pixels and dots, including but not limited to” various “display technologies” including “Organic Light Emitting Diode (OLED).” Ex. 1005, 1:17–29 (emphasis added). Accordingly, we find that Phan fairly suggests that the pixel arrangements disclosed in Phan—which are part of Phan’s “invention”—may be applied to OLEDs. See Twitter, Inc. v. VidStream LLC, 825 F. App’x 844, 850 (Fed. Cir. 2020) (quoting Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019)) (“[W]hen conducting an obviousness analysis, the Board must consider a prior art reference ‘not only for what it expressly teaches, but also for what it fairly suggests.’”). In making this finding, we note that obviousness is determined from the perspective of a person of ordinary skill in the art (see 35 U.S.C. § 103(a)), who in this case would have had “2 years of professional experience working with display design, including OLED displays.” See supra § II.B. In light of this specific experience, we find that an ordinarily skilled artisan would have been inclined to link Phan’s disclosed pixel arrangements with OLEDs based on the plain statement about related “display technologies” in Phan’s “Field of the Invention” section. See, e.g., Ex. 1003 ¶¶ 321, 410–414. For these reasons, we disagree with Patent Owner’s assertion that “Phan does not teach about OLED displays.” PO Resp. 32.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34

  • Strike new argumentNew argument disregardedGranted in part

    “6 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’683 patent. See id.; Pet. Reply 20. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 34

  Patent outcomesUS 10,854,683 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,854,683
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.Some claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-00987 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4 and 19–21 are unpatentable as obvious; claim 5 was not shown unpatentable because the Phan-based challenge did not establish its limitations.

  RulingsFinal written decision

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

    “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d at 988.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner

    “For these reasons, we accord Patent Owner’s evidence of long-felt” slip op. at 70

  • Strike new argumentNew argument disregardedGranted in part

    “9 In its Opposition to Petitioner’s first motion to strike, which was filed after the Patent Owner Response, Patent Owner implies that the teardown images in the Response speak for themselves and, as such, are entitled to a presumption of nexus. See 1st Strike Opp. 3–4; see also Tr. 102:19–103:15 (similar argument by Patent Owner’s counsel at the oral hearing). Petitioner argues that Patent Owner did not assert an entitlement to a presumption of nexus in the Response, and that Patent Owner’s Opposition is an improper vehicle to introduce such an argument. 1st Strike Reply 1. We agree with Petitioner that Patent Owner did not address in the Response whether the Samsung Galaxy S22 Ultra smartphone is coextensive with the claims of the ’803 patent. See id.; Reply 21. Accordingly, we decline to consider any argument that Patent Owner is entitled to a presumption of nexus.” slip op. at 63

  Patent outcomesUS 9,818,803 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,818,803
• Microsoft Corporation v. Throughputer, Inc.Some claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00574 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Stevens and Smetana, with Daly added for claim 2; claims 8–14 and 21–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “science, computer engineering, or a related field, and 2-3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 6–7 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill, and Dr. Smith’s testimony is based on a similar definition. See Ex. 2002 ¶ 15. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’353 patent and the asserted prior art.” slip op. at 8

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

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “h. Conclusion for Claim 1 Petitioner has persuasively shown that the combination of Stevens and Smetana teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references. Thus, regarding claim 1, we determine that Petitioner has shown, by a preponderance of the evidence, that the claimed invention as a whole would have been obvious over the combination of Stevens and Smetana.” slip op. at 25

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

    “We find that Smetana teaches the implementation of multiplexers in hardware. See, e.g., Ex. 1005, 2:35–37, 2:60–4:3, Fig. 2. We also find that Stevens teaches matrices/nodes 150/800 that are sometimes dedicated to a particular task. See, e.g., Ex. 1003 ¶¶ 112–113; Ex. 1004 ¶¶ 95, 97, 133– 134, 137, 190. Furthermore, Petitioner persuasively shows that an ordinarily skilled artisan would have implemented Stevens’s multiplexers 280 and 955 as hardware multiplexers based on the teachings of Smetana to obtain the benefits of reduced propagation delay and reduced power consumption. See, e.g., Ex. 1003 ¶¶ 74–75; Ex. 1005, 1:13–18. We note that Stevens already describes the ACE as an integrated circuit hardware platform (see Ex. 1004 ¶¶ 2–3, 5), which supports that an ordinarily skilled artisan would have expected success in implementing the components of the ACE, such as Stevens’s multiplexers, as hardware resources based on Smetana’s teachings. See Pet. 27 (citing, inter alia, Ex. 1003 ¶¶ 74–75, 111).” slip op. at 23

  Patent outcomesUS 10,318,353 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,318,353
• NVIDIA Corporation v. Polaris Innovations LimitedSome claims unpatentable
  PTAB · Nov 20, 2018 · IPR2017-01346 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1, 4, 8–12, 16, 18, 43, 45, and 48–51 are unpatentable; claims 2, 19, 20, 22, 26–30, and 44 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Tredennick, testifies that “[a] person of ordinary skill in the art as of the time of the ’344 patent (POSITA) would have had a Bachelor’s degree in Electrical Engineering and at least 2 years of experience working in the field of semiconductor logic design.” Ex. 1003 ¶ 13. Neither Patent Owner, nor its declarant, Dr. Przybylski, offers a different assessment of the level of ordinary skill in the art. See Ex. 2002 ¶ 38 (“I am applying the definition of the level of experience of a person of ordinary skill in the art that has been put forward by Dr. Tredennick in his declaration. I do not necessarily agree with the definition offered there, but I do not presently believe that the exact level of experience of a person of ordinary skill impacts my opinions offered herein.”). Based on the evidence of record, we adopt Dr. Tredennick’s statement of the level of ordinary skill in the art with the exception of the language “at least.” Thus, we determine that the skill level of a person of ordinary skill in the art would have been that of a person with a bachelor’s degree in electrical engineering and two years of experience working in the field of semiconductor logic design.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Thus, “data arrangement alteration” requires the alteration of the arrangement of data, not merely the alteration of data.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownOther

    “Structure: first error coding path 120 and equivalents. See Ex. 1001, 3:27–34, 3:57–4:25, 5:53–64, Figs. 1A, 1E. Function: performing a data Claim 19: means for performing a data arrangement alteration arrangement alteration algorithm algorithm Structure: data arrangement alteration devices 122, 132, and 222 and equivalents. See id. at 3:27–34, 5:65–6:25, 6:42–65, 8:55–57, 10:34–45, Figs. 1–4. Dec. on Inst. 8–9.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Digital Subscriber Line (ADSL) Metallic Interface, and it bears a copyright date of 1999. Ex. 1004. Citing the Declaration of Jessica Coral Sheldon- Hess, Petitioner contends ADSL is prior art under 35 U.S.C. § 102(b). Pet. 2 (citing Ex. 1014, 4–5). Ms. Sheldon-Hess testifies that, based on ADSL’s Machine Readable Cataloging (MARC) record obtained from Illinois State Library, ADSL was available to the public as of 1999. Ex. 1014 ¶¶ 8–10. Patent Owner does not dispute the prior art status of ADSL. Petitioner’s evidence establishes that ADSL was publicly available as a printed publication more than one year before the U.S. filing date for the ’344 patent, which is March 11, 2008. See Ex. 1001, [22]. Based on this evidence, we determine that ADSL qualifies as a prior art printed publication under 35 U.S.C. § 102(b).” slip op. at 17

  Patent outcomesUS 8,161,344 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,161,344
• Technical Consumer Products, Inc. / Nicor Inc. et al. v. Lighting Science Group Corp.Some claims unpatentable
  PTAB · Oct 31, 2018 · IPR2017-01280 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–3, 5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 are unpatentable under § 103; claims 3 and 4 were not shown unpatentable over Zhang, Soderman, and Silescent.

  RulingsFinal written decision

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

    “(collectively, “Lead Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of U.S. Patent No. 8,967,844 B2 (Ex. 1001, “the ’844 patent”) pursuant to 35 U.S.C. §§ 311–319. Patent Owner, Lighting Science Group Corp. (“Patent Owner”), did not file a Preliminary Response to the Petition. We determined that the information presented in the Petition established that there was a reasonable likelihood that Lead Petitioner would prevail in challenging claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we instituted this proceeding on November 1, 2017, as to claims 1–5, 7–9, 11, 12, 14, 16, 17, 19, and 21–24 of the ’844 patent. Paper 10 (“Dec. on Inst.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for patent owner

    “The parties’ definitions of the level of skill differ in minor respects, including the number of years of experience and whether or not a 5 Patent Owner has not put forth any evidence or argument related to secondary considerations of nonobviousness. background in chemical engineering should be included. At his deposition, Dr. Bretschneider testified that he included a degree in chemical engineering in his definition because that degree confers expertise in heat transfer. Ex. 1023, 37:14–22. We find this testimony persuasive. Regarding the difference in years of experience, both declarants agree that three years of experience is appropriate. For these reasons, we define the person of ordinary skill in the art as having a bachelor’s degree in electrical engineering, mechanical engineering, chemical engineering, physics, or a related field and three years of experience in designing LED lighting products or fixtures. We are satisfied that this definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’844 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPatent owner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner (Pet. Reply 8–9), however, that an ordinarily skilled artisan would not have read Chou as narrowly as Patent Owner contends. Not only does Chou state that its fixture “may be configured to be installed into a recessed can housing having other geometries,” but also “recessed housings . . . developed with different geometries.” Ex. 1012, 3:65–4:7 (emphasis added). In light of this express teaching in Chou, we do not agree that Chou’s teachings are confined to 5- and 6-inch can lights, or even can lights in general. Junction boxes represent another geometry that can serve as a recessed housing for an LED light fixture. See Ex. 1023, 30:17–31:7 (Dr. Bretschneider testifying that, by 2009, LED light fixtures attached to junction boxes were known with “certain parts” inside the box). In addition, the fact that certain figures of Chou might depict a junction box external to a can light does not mean that junction boxes are excluded from the universe of “recessed housings” contemplated in the quotation above. In addition, Patent Owner contends Petitioner has provided no reason or motivation to combine Wegner with Chou. PO Resp. 10–11. Patent Owner also contends an ordinarily skilled artisan would not have combined Wegner with Chou because Wegner pertains to a light with a tall reflector, which must be installed in a can light fixture (and not a junction box). Id. at 11–12 (citing Ex. 2001 ¶¶ 74–75, 133–137). Yet Petitioner only cites Wegner for its teaching of removing an Edison base from an LED light fixture to facilitate direct wiring, and not for anything to do with reflectors. Pet. 24 (citing Ex. 1002 ¶ 53; Ex. 1016, 11:3–32). As such, Patent Owner’s arguments regarding Wegner’s light reflectors amounts to a bodily incorporation argument, which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.”). We are persuaded that, based on Wegner, an ordinarily skilled artisan would have known to remove the Edison base of Chou’s fixture regardless of the type of reflector and housing used in Wegner’s fixture. See Ex. 1002 ¶ 53. Regarding motivation, Petitioner posits a market-based rationale, namely, that an ordinarily skilled artisan would have been motivated to make a version of Chou’s luminaire to fit nominally sized junction boxes to serve the new construction market. Pet. 25 (citing Ex. 1002 ¶ 54). Dr. Coleman testifies that the Edison base would have been removed to make Chou’s luminaire work in a junction box. Ex. 1002 ¶ 53. We are persuaded that an ordinarily skilled artisan wanting to modify Chou for use in junction boxes would have known to make this modification.” slip op. at 19

  Patent outcomesUS 8,967,844 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,967,844
• Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Aug 9, 2018 · IPR2017-00859 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 7, 8, 12, and 13 are unpatentable as obvious over the ANSI Standard and Ett; claims 16, 18, and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree that the differences are not determinative. We also find that Patent Owner’s evidence of the level of skill in the art, although generally expansive regarding “data interchange” and exchange using electronic documents, casts an overly broad net for the ’586 patent, which describes that the “present invention relates generally to bar code technology” (Ex. 1001, 1:19–20). We agree with Petitioner that bar code technology is the technology that forms the background of the claims and specification. Reply 15–16; Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1257 (Fed. Cir. 2007) (referring to “the invention” and “the claim[s]” to determine the level of ordinary skill in the art). Accordingly, we adopt Petitioner’s identification of the level of ordinary skill in the art as reflecting the claims and specification of the ’586 patent. C.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “failed to show that the ANSI Standard (Exhibit 1002) is authentic and not hearsay. PO Mot. Excl. 1, 3–5. Our prior case, cited by Patent Owner, acknowledges that panels have more often relied on copyright notices as probative evidence of publication. See Ford Motor Co. v. Versata Dev. Grp., Inc., Case IPR2016-01016, at 6 (PTAB Sept. 27, 2016) (Paper 11) (citing cases); see also Ericsson Inc. v. Intellectual Ventures I LLC, IPR2014-00527, Paper 41, at 10–11 (PTAB May 18, 2015). We find the copyright notice on a commercial standards document, such as the ANSI Standard copyright marking that is not directly challenged by the Patent Owner, is generally reliable indicia used by the interested public, absent counterfactual evidence. FRE 803(17); see Ex. 2004, 95:23–96:20; Ex. 1008 ¶ 19; Ex. 1002, vvi. We note that Patent Owner acknowledges that persons of ordinary skill in the art turn to ANSI publications as a recognized source. PO Resp. 15. We agree with Petitioner that the copyright notice of the ANSI Standard is admissible under the residual hearsay exception. FRE 807. ANSI has “circumstantial guarantees of trustworthiness” due to the voluminous evidence referencing it (e.g., Exs. 1011, 1032– 1034, 1037), the formalized processes culminating in its publication (Ex. 1008 ¶¶ 9, 11–17; 1023 ¶¶ 6, 8–14; Exs. 1009, 1010), and its status as a standards document. There can be no question that industries rely on ANSI standards. E.g., Ex. 1008 ¶ 19; Ex. 1023 ¶ 20; Ex. 2004 at 95:21–96:11, 190:16–194:7. (Paper 34) Pet. Opp. Excl. 2 (footnote omitted). Patent Owner also does not challenge the ANSI Publication Manuals (Exhibits 1009, 1010), which further support the evidence that the ANSI Standard was published as a standards document.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “Based on the ’586 patent specification and the decoding means of claim 16, and related dependent claims 18 and 19, we determine that the structure includes the algorithm that performs the decoding function. See Ex. 1001, 5:40–48 (describing particular “logic and computer routines” in step 127 of Figure 1). Thus, the corresponding structure is more than a general purpose computer or controller. Pet. 10–11; see Aristocrat Techs. Austl. Party Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)). Petitioner does not address the algorithm identified as corresponding structure for the “means for decoding” of independent claim 16 as construed above, and in particular, Petitioner fails to show that the asserted prior art teaches or discloses the algorithm in claim 16 and its dependent claims 18 and 19. Accordingly, Petitioner has not shown the unpatentability of claims 16, 18, and 19.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedPrinted publication establishedMixed

    “We are not persuaded that Petitioner has sufficiently shown by a preponderance of the evidence that UPS qualifies as a prior art printed publication. The last page of UPS includes the following: “01880273 REV. 1/96 50M.” Ex. 1004, 47. Although “1/96” appears to be the date January 1996, the annotation itself does not indicate that the document was disseminated on that date. Additionally, the deposition testimony from Bartex that Petitioner relies on (Pet. 64 (citing Ex. 1012, 58–60)) pertains to “Exhibit 4” (Ex. 1012, 58–60), which has not been submitted in this proceeding. In sum, we have no way to determine if UPS is the same as “Exhibit 4,” and Petitioner fails to establish as much. Thus, we do not find Mr. Lewis’ testimony regarding “Exhibit 4” persuasive, nor do we find that the record contains sufficient evidence to support the finding that UPS was publicly disseminated. Thus, Petitioner has not established that UPS qualifies as a prior art printed publication. Accordingly, Petitioner has failed to show that the two grounds including UPS render the challenged claims unpatentable by a preponderance of the evidence.” slip op. at 18

  Patent outcomesUS 9,047,586 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,047,586
• Fedex Corporation v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Jul 20, 2018 · IPR2017-00729 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious over Rappaport, Rappaport and DeLorme, or Rappaport and Wright; claims 18–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have held at least a Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent, and two or more years of industry experience in the field of mobile communications, or the academic equivalent thereof.” Pet. 8. Petitioner bases its argument on the testimony and experience of Dr. Lavian. Id. (citing Ex. 1005 ¶¶ 44–49). Patent Owner does not dispute Petitioner’s statement. See generally PO Resp. For the 3 The complete record does not include evidence of objective indicia of nonobviousness or secondary considerations. reasons given by Petitioner (Pet. 8; Ex. 1005 ¶¶ 44–49), we adopt Petitioner’s statement of the level of skill in the art.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a).” slip op. at 45

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

    “Although Petitioner directs us to a portion of the ’581 Patent that Petitioner contends corresponds to the field management program, i.e., “Ex. 1001, 7:50–8:12” (Pet. 10), Petitioner does not identify teachings in Rappaport corresponding to the algorithm in the ’581 Patent, which includes “[t]he program would prompt the user for input of data related to the problem.” Ex. 1001, 7:54–55. Petitioner’s assertion that no substantial differences exist between “Rappaport’s memory, processor, and SitePlanner® program and the memory, processor, and field data management program” of the ’581 Patent is conclusory. Pet. 51. Although Petitioner includes references back to its contentions for other independent claims that do not require a prompt, Petitioner does not provide any explanation regarding these other teachings and the prompt requirement of claim 18. Id. As discussed above with respect to independent claims 1 and 7, Rappaport teaches repeating the cycle of making measurements, receiving optimized predictions, and reconfiguring the network. See, e.g., Ex. 1002, 19:1–8. However, Petitioner has not shown sufficiently that this teaching, or any other teaching in Rappaport, is the same or equivalent to a program that prompts the user to input data. Dr. Lavian’s testimony (see, e.g., Ex. 1006 ¶ 205) is conclusory and substantially the same as Petitioner’s contentions. Dr. Lavian testifies that the program in Rappaport when executed “is substantially equivalent” to that of the ’581 Patent. Id. Because Dr. Lavian does not disclose sufficiently the underlying facts or data on which his opinion is based, including what portions of Rappaport are substantially equivalent to the prompt in the ’581 Patent, we give his testimony (Ex. 1006 ¶ 205) little or no weight. 37 C.F.R. § 42.65(a). In summary, Petitioner has not provided persuasive contentions identifying in Rappaport teachings for the “means for managing data collected at the field using the at least one handheld device responsive to program,” recited in claim 18. On this record, we are not persuaded Petitioner establishes by a preponderance of the evidence that claim 18 is unpatentable over Rappaport.” slip op. at 45

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

    “Petitioner has shown that all the limitations of claim 1 are taught in Rappaport’s description with respect to two consecutive figures, i.e., Figures 9 and 10. Rappaport’s Figures 9 and 10 both pertain to a system with a handheld device that transmits field data to a remote server, consistent with Dr. Lavian’s testimony. Ex. 1006 ¶¶ 77, 80 (citing, e.g., Ex. 1002, (57), 1:12–18, 4:41–5:31, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10). Even to the extent that these disclosures are of two separate embodiments, “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Sci. Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). Consistent with Dr. Lavian’s testimony (Ex. 1006 ¶¶ 80–85), we find that it at least would have been obvious and predictable for a person having ordinary skill in the art to combine the functionality disclosed with respect to Figures 9 and 10 into a single handheld device that transmits measured field data to a remote server so that the technician could optimize on-site and on the fly. See, e.g., Ex. 1002, 18:7–18, 18:33–48, 18:64–19:8. Rappaport depicts handheld devices in Figures 1, 3, 9, and 10 and refers to each device as a “handheld computer.” See, e.g., Ex. 1002, 6:27–58, 9:26–36, 14:54–15:3, 16:56–65, 18:7–18, 18:64–19:8, Figs. 1, 3, 9, 10. Dr. Sharony’s testimony that the proposed combination is impractical because “the exemplary Palm IIIc handheld of Rappaport . . . only had one serial port” (Ex. 2008 ¶¶ 53–59) does not take into account the full disclosure of Rappaport including “many other portable handheld computers” that “could be used while staying within the spirit of the present invention” such as cellular phones, other PDAs running PalmOS and pocket or tablet personal computers (PCs) running the Windows OS or “another powerful OS.” See, e.g., Ex. 1002, 6:27–58; see also id. at 19:9–12 (“[T]hose skilled in the art will recognize that the invention can be practiced with considerable variation”).6 Additionally, Dr. Sharony’s testimony that the measurement device and the interface box must be connected “at the same time” (Ex. 2008 ¶ 53) is not commensurate with the scope of claim 1, which does not require simultaneous collection and transmission of field data.” slip op. at 24

  Patent outcomesUS 8,494,581 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,494,581
• Fca US LLC v. Signal IP, Inc.Some claims unpatentable
  PTAB · Oct 19, 2016 · IPR2015-01118 · APJ John A Hudalla · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  • Expert testimonyPetitioner expert creditedDecided for petitioner

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

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

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

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

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

  Patent outcomesUS 5,463,374 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 5,463,374

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.