• Yealink (USA) Network Technology Co., Ltd. / Yealink Network Technology Co., Ltd. v. Barco NVNo claims unpatentable
  PTAB · Oct 5, 2026 · IPR2025-00598 · APJ David C Mckone · IPR · Final written decision

  Claims 1–31 were not shown unpatentable under either § 103 ground because the asserted combinations did not teach required claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “admissions by Patent Owner in litigation, contends that a person of ordinary skill in the art would have had “a Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field” and that “[a]dditional educational experience could substitute for some of the work experience.” Pet. 5 (citing Ex. 1002 ¶¶ 36–37). “Patent Owner does not dispute Petitioner’s proposed level of skill in the art (Petition, 5) at this time.” PO Resp. 6. On the complete record, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is uncontested and is consistent with the technology described in the ’347 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “In the Preliminary Response, “Patent Owner accept[ed] the Petition’s claim construction.” Prelim. Resp. 6. However, in the Patent Owner Response, Patent Owner argues that “the claims of the ’347 Patent require no construction as they are valid under their plain and ordinary meaning.” PO Resp. 6. Based on the complete record, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Beel actually discloses the following: [0321] On the peripheral device 32 the video packets are received at the corresponding plug and play port, e.g. the USB port 11, read by the Human Interface Driver (HID) interface handler 13, unpacked to remove HID protocol headers in an unpacker 20 and then transmitted to the communications network by a transmitter 21. The network can be wireless for example WiFi or LiFi network. [0322] Having been routed over a communications network to the base unit 33, the incoming stream is read from the communications interface such as a WiFi access point 22, unpacked in an unpacker 25, decoded in a decoder 26 and then inserted into a suitable composition such as an OpenGL based composition in the compositor 29 for display on a central display device. Ex. 1005 ¶¶ 321–322 (emphasis added to portions quoted by Petitioner). Patent Owner notes that “[t]he Petition mistakenly cites to ¶ 322 of Beel but quotes ¶ 321.” PO Resp. 20 n.3. However, it appears that Petitioner has grafted together a portion of paragraph 321 that introduces peripheral device 32 with a portion of paragraph 322, which discusses features of base unit 33. However, this grafting has been done in such a way as to convey (incorrectly) that peripheral device 32, not base unit 33, includes unpacker 25, decoder 26, and compositor 29 that process the first processed video data received by the first peripheral device to generate second video data. Dr. Almeroth’s testimony, which copies Petitioner’s incorrectly altered quotation to paragraph 322 of Beel, is unreliable as to this claim limitation and is entitled to no weight.4 Thus, Petitioner has no expert testimony on which to rely for this claim limitation.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “5 At the oral argument, when challenged on its reliance on paragraph 322, Petitioner argued that paragraph 321 of Beel teaches this limitation. Tr. 22:26–23:24. Petitioner did not make this argument in the Petition and, instead, raised it for the first time during oral argument; thus, it will not be considered. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to dismiss Dell’s untimely argument given that the untimely argument in this case was raised for the first time during oral argument.”). Even if we were to consider this new argument, it would not be persuasive. As Patent Owner observes (PO Resp. 20), any processing performed by peripheral device 32 in paragraph 321 is on data received from the processing device and destined for the base station via the network, rather than data flowing in the direction of the first processed video data of claim 1.” slip op. at 22

  Patent outcomesUS 11,966,347 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,966,347
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Visa, Inc. v. Cortex MCP, Inc.No claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Petition did not establish the claimed second OVER file over Oborne or a sufficient basis to combine Stafford and Purves.

  RulingsFinal written decision

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

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 9–13 (referring to the ’854 patent Specification, the language of claim 1, and Dr. Shamos’s testimony). However, we did not determine whether an “OVER file” included “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file,” because it was not necessary for purposes of Institution. Id. Moreover, we determined that Petitioner had made a sufficient showing that Oborne’s tokens qualified as “OVER files.” Id. at 11, 24–31. Patent Owner argues that no construction is required, but, regardless, “the claims may be confirmed under the Board’s construction.” PO Resp. 11; Sur-reply 1. Petitioner also does not dispute our preliminary construction. Reply 1. In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Reply 1–2 (citing PO Resp. 49–50). “For example,” Petitioner asserts, “verification in subsequent claim elements involves the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things, as PO’s expert admits.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “In its Response, Patent Owner stated that it “agrees in substance with the Board’s construction” of this term, and clarified its understanding of that construction as requiring that “the issuing agency has verified the ‘virtual representation’ (and not the ‘credential’) to be ‘a first official representation of the original credential.’” PO Resp. 11–12. In its Reply, Petitioner points to Patent Owner’s reliance on an example in the ’854 patent Specification involving the checking of a driver’s license identification number against a DMV database to show verification of information in an OVER File generation request. Reply 2 (citing PO Resp. 14–16; Ex. 1002, 6:35–39, 6:54–65). Based on this portion of the Patent Owner Response, as well as portions of Dr. Malek’s deposition, Petitioner argues that Patent Owner “admits that a virtual representation of the credential may be ‘verified by an issuing agency’ by checking credential data against an issuing agency database.” Id. (citing Ex. 1047, 37:24–41:1, 41:2–22). In its Sur-reply, Patent Owner argues that Petitioner misinterprets its discussion of the DMV example, and contends that what Patent Owner was actually arguing based on that example is that the “credential” (the “OVER file”) is verified, not that “credential data” is verified. PO Sur-reply 1–3. After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of a credential.” Inst. Dec. 15–16. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “agrees with [Petitioner’s proposed] definition of the level of ordinary skill in the art.” PO Resp. 10 (citing Ex. 2009 ¶¶ 37–41). In the Institution Decision, we found Petitioner’s proposed level of ordinary skill in the art to be reasonable and consistent with the problems and solutions disclosed in the prior art of record. Inst. Dec. 8. Given that Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, we continue to apply Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Although we agree with Petitioner that Oborne teaches that “‘device fingerprinting may be utilized’ to provide ‘additional security’ for use of Oborne’s tokens,” Pet. 34 (citing Ex. 1011 ¶ 26 (emphasis added)), we do not agree with Petitioner’s arguments related to “device fingerprinting.” Petitioner also relies on testimony from Dr. Shamos to support its position. However, Dr. Shamos’s cited testimony in paragraph 239 merely repeats what is stated in the Petition, does not provide citation to any other evidence of record, and does not provide any further explanation as to why one of ordinary skill would have been motivated to use device fingerprinting to tie a given token to a given device such that the token for the second device would be invalid in the first device. Ex. 1005 ¶ 239. Dr. Shamos refers to Oborne’s disclosures on “digital fingerprinting” and a client’s MAC address in the token data structure. Id. (citing Ex. 1011 ¶¶ 26, 47). We have considered Petitioner’s arguments in light of Oborne’s disclosure, but find Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for a second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. Id. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of” slip op. at 24

  Patent outcomesUS 9,954,854 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,954,854
• Western Digital Technologies, Inc. v. Longitude Licensing Ltd.No claims unpatentable
  PTAB · Jan 21, 2025 · IPR2023-01230 · APJ Richard M Lebovitz · IPR · Final written decision

  The Board held claims 1–18 not unpatentable over Zhang and Javanifard or Javanifard alone, and claims 9 and 18 not unpatentable over either combination with Kang.

  RulingsFinal written decision

  • BurdenDecided for patent owner

    “III. BURDEN In an inter partes review, a petitioner bears the burden of persuasion to prove “unpatentability by a preponderance of the evidence.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)); see 37 C.F.R. § 42.1(d) (2024). This burden never shifts to Patent Owner. Dynamic Drinkware, 800 F.3d at 1378 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–1327 (Fed. Cir. 2008) (discussing the burden of proof in inter partes review). Petitioner must explain with particularity how the prior art would have rendered the Challenged Claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). IV. PATENTABILITY ANALYSIS A. Legal Standards A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said (2007). The obviousness inquiry requires an analysis of “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) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “(Nov. 2019), 73 available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“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.”). Newly cited Exhibits 1026 and 1030 are not identified by Petitioner as responsive to Patent Owner’s Response. Rather, the new evidence cited by Petitioner is improperly being used to supply evidentiary support for an argument made in the Petition that lacked such support. A reply cannot be used to introduce new evidence to fill gaps in the Petition or bolster arguments that were inadequately supported in the Petition. The introduction of such evidence constitutes an improper attempt to remedy deficiencies in the Petition, which should have initially contained necessary evidence and arguments to support Ground 1. Accordingly, we find that the introduction of Exhibits 1026 and 1030 as evidence for Ground 1 is impermissible.” slip op. at 51

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art at the time of” slip op. at 9

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

    “4. Reasons to combine The principal dispute in this inter partes review is whether Petitioner established a reason to combine Zhang and Javanifard. Primarily, the Petition pointed to disadvantages in the “prior art” identified by Javanifard, motivation to apply Javanifard to Zhang’s fixed stage circuit. Pet. 19–20 (citing Ex. 1003 ¶¶ 90–96). Specifically, the Petition identifies the following reasons as motivation to combine Zhang and Javanifard (citing Ex. 1006, 1:48–53; 1:66–2.2): 1. “‘accommodate different output levels for a given charge pump power supply input level.’” 2. “‘accommodate a given output level for different charge pump power supply input levels.’” 3. “provide flexibility for design needs (e.g., power saving mode, and” slip op. at 34

  Patent outcomesUS 9,207,701 not shown unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 9,207,701
• Samsung Electronics Co., Ltd. v. Netlist, Inc.No claims unpatentable
  PTAB · Dec 10, 2024 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–5 were not shown unpatentable on any asserted obviousness ground because the evidence did not establish the claimed data-path delay circuit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 9

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

    “1[e], together with limitation 1[f], and note that we are not performing claim construction of a specific claim term or phrase per se. Claim 1 of the ’608 patent recites that “each respective buffer circuit including a data path corresponding to each data signal line in the respective set of data/strobe signal lines” [limitation 1[e]] and “wherein the data path corresponding to the each data signal line includes” . . . “a delay circuit configured to delay a signal through the data path by an amount . . . ” [limitation 1[f]]. Ex. 1001, 19:36–55 (emphasis added). The operative issue is the identification of the “data path” that is claimed in claim 1. The claim differentiates between data signal lines and strobe signal lines. Limitation 1[e] identifies that “a data path” corresponds to the data signal line in the set of data/strobe signal lines; that is, it is a data path that is in the data signal line. The data path claimed, therefore, is not in a strobe signal line of the set of data/strobe signal lines. Limitation 1[f] confirms this understanding, reciting “the data path,” (with the antecedent of “a data path” of limitation 1[e]), that corresponds to each data signal line, and which includes a delay circuit that delays a signal through the data path. Patent Owner refers to Figures 3, 4A, and 4B of the ’608 patent, which confirms this understanding of the language of claim 1 in that it provides written description support for the reading of the explicit language of claim 1. See PO Sur-reply 1–2. These figures, as well as their associated descriptions, support that there are different transmission lines (data paths) with a separate signal transmission line for transmitting/receiving data signals and a separate strobe line for transmitting/transmitting strobe signals. See Ex. 1001, 10:31–11:8, 11:20– 45, Figs. 3, 4A–4B, see also id. code (57) (identifying that the “data path” corresponds with the data signal line in the set of data/strobe signal lines).” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action. Google LLC, 54 F.4th at 1381 (citing In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994) (emphasis added)). The issues in this proceeding and those at issue in the -00236 IPR are not identical. The claims of the ’035 patent and the instant ’608 patent are different. Claim 1 of the ’035 patent recites “each respective buffer circuit including data paths for transmitting respective data and strobe signals associated with the first memory operation and logic configured to respond to the module control signals by enabling the data paths,” “wherein the logic is further configured to obtain timing information based on one or more signals . . . to control timing of the respective data and strobe signals on the data paths.” Ex. 1031, 19:35– 45. Claim 1 of the ’035 patent explicitly recites that the data paths have data and strobe signals transmitted on them. That is unlike claim 1 of the ’608 patent at issue here—claim 1 of the ’035 patent does not recite that the “data path” is “corresponding to each data signal line in the respective set of data/strobe signal lines,” as claim 1 of the ’608 patent does.” slip op. at 20

  • Strike new argumentNew argument consideredGranted in part

    “response, but may not raise “in reply, ‘an entirely new theory of prima facie obviousness absent from the petition,’ even if the new theory is responsive to the patent owner’s response or the Board’s institution decision.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) (quoting Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017)).” slip op. at 45

  Patent outcomesUS 10,268,608 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,268,608
• Google LLC v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Aug 1, 2024 · IPR2022-00279 · APJ David C Mckone · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable over either Kovatch and Burrows or Wise and Burrows because the combinations did not teach the claimed polling and rank-decrease limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” 5 The complete record does not include allegations or evidence of objective indicia of nonobviousness. same proposal. PO Resp. 1. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “From this description in Burrows, it is clear that index 70 has no sense of ranking, and that Burrows’ system overall has no sense of ranking prior to a query; thus, adding or deleting a webpage from the index does not change a ranking that does not yet exist. It is also clear that, if a page is flagged as deleted, it will be ignored by the query module when the query module queries the index and ranks the identified qualified pages. Id. at 15:12–16, 15:21–22. The webpage’s rank is not decreased, as the webpage is never ranked in the first place. As Mr. Occhiogrosso testifies: web page. A “polled web site” page cannot be ranked in the Burrows system because the Burrows ranking is performed only after a user query is performed. Only at that time can the Burrows system provide a ranked list (of qualified webpages) for presentation to the user. As Burrows discloses, the Automated Web Browser is robotic in nature and not associated with the queries of users. Ex. 2009 ¶ 181. Mr. Occhiogrosso’s testimony on this point is consistent with Burrows’ description, credible, and entitled to substantial weight. We have considered Mr. Lipoff’s testimony that a skilled artisan “would have understood that combining Burrows’s polling mechanism receiving no response into Kovatch would decrease the entries’ ranking or placement in Kovatch’s destination tree in order to further limit the pages that may not be of interest to the user.” Ex. 1002 ¶ 172 (citing Ex. 1006, 1:38–46). That testimony, however, is conclusory and lacks persuasive reasoning. Moreover, the passage in Burrows to which it cites (Ex. 1006, 1:38–46) does not teach or suggest decreasing the ranking of webpages. Thus, Mr. Lipoff’s testimony on this point lacks credibility and is entitled to little weight. Upon consideration of the complete record, we are not persuaded that Kovatch and Burrows teach claim limitations 1H and 2H.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In the Reply, Petitioner argues that “the type of database record that Burrows polls and ranks makes no difference for this teaching; processing costs and cycles, equating to processing time, are a potential issue any time computer processing occurs.” Reply 20 (citing Ex. 1061 ¶ 24). Mr. Lipoff repeats this statement in his testimony without identifying the basis for it, rendering that testimony of little value. Ex. 1061 ¶ 24. In any case, it appears that Petitioner and Mr. Lippoff are arguing that a general notion of processing cost any time computer processing occurs would lead a skilled artisan to decrease a webpage’s rank based on response time. This is a new argument, not presented in the Petition, and is therefore forfeited and will not be considered. In any case, Petitioner has not supported this new argument with persuasive evidence.” slip op. at 31

  • BurdenFwd all claims patentableNot shown unpatentable

    “In sum, for several reasons, Petitioner has not shown that Kovatch and Burrows teach claim limitations 1H–1J and 2H–2J and, therefore, Petitioner has not shown that Kovatch and Burrows teach each limitation of claims 1 and 2. 4. Conclusion of Nonobviousness As explained above, Petitioner has failed to show that the combination of Kovatch and Burrows teaches each limitation of claims 1 and 2. Upon consideration of all the evidence, we conclude that Petitioner has not proved by a preponderance of the evidence that claims 1 and 2 would have been obvious over Kovatch and Burrows.” slip op. at 32

  Patent outcomesUS 6,721,705 not shown unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,721,705
• Sony Group Corp. (Japan) / Sony Corp. Of America et al. v. MZ Audio Sciences, LLCNo claims unpatentable
  PTAB · Apr 8, 2024 · IPR2022-01544 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 were not shown unpatentable because Petitioner did not establish sufficient reasons to combine the references in any of the three obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a related field with coursework in signal processing, plus two years of academic and/or industry experience in signal processing or a related field. More education could substitute for experience, and vice versa.” Pet. 7. “Patent Owner does not dispute Petitioners’ definition of a [person of ordinary skill in the art].” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art, other references of record, and the ’961 patent specification.” slip op. at 7

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

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2020). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Petitioner relies on the plain and ordinary meaning and contends that it is unnecessary to construe any claim terms explicitly. See Pet. 8 (citing 37 C.F.R. §42.100(b)). Patent Owner “agrees with Petitioner that, for purposes of this Response only, all terms of the ᾽961 patent have their plain and ordinary meaning.” PO Resp. 23. As Petitioner contends, it is not necessary Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “Dr. Scordilis. Based on the record, Petitioner fails to provide a sufficient reason to arrive at the claimed invention and satisfy the burden of showing obviousness. As Patent Owner essentially argues, Cabot (and all references relied upon by Petitioner and Dr. Scordilis) do not pertain to “quantizing a phase difference of the at least one overtone relative to the fundamental tone to embed at least one bit of the data to be embedded” as step 1C-2 requires. See PO Resp. 32–33. Petitioner also relies on Kudumakis to modify Srinivasan in asserting that step 1C-2 would have been obvious, but Petitioner’s reliance on Kudumakis is also faulty as explained below. See Pet. 22–27 (relying on Ex. 1006 (Cabot), Ex. 1007 (Kudumakis); Ex. 1028 (Risset), Ex. 1031 (Lipshitz), Ex. 1055 (“Cox-SSSW”); Ex. 1020 (“Cox- 1995” ); Ex. 1021 (“Wu”)). articulated reasoning with some rational underpinning” to show that one of ordinary skill in the art would have had a sufficient reason to modify Srinivasan’s frequencies to embed a quantized phase difference between a fundamental and its harmonic into the harmonic as step 1C-2 requires. See Kahn, 441 F.3d at 988 (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)); In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“teachings of references can be combined only if there is some suggestion or incentive to do so”) (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)). As noted above, Dr. Scordilis states that Cabot merely “opens the venue for exploration” for an artisan of ordinary skill to “try to . . . explore” watermarks. Ex. 2011, 75:16–22. Dr. Scordolis’s testimony relates to an “obvious to try” rationale, but neither Dr. Scordilis’s testimony, nor Petitioner’s showing, satisfies the conditions to support that rationale. In particular, Dr. Scordilis does not testify, and Petitioner does not show, that the technique of embedding phase difference codes into a harmonic relative to its fundamental was one of “a finite number of identified, predictable solutions” and a “known option[]” for hiding data. Cf. KSR, 550 U.S. at 402 (indicating that under an “obvious to try” rationale, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp” (emphasis added)).” slip op. at 25

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “The record supports Patent Owner’s characterization of Dr Scordilis’s testimony. Dr. Scordilis does not rely on any references that “have a frequencies specifically.” See Ex. 2011, 90:4–8 (testifying such references are “[n]ot in [his] report”). Moreover, Dr. Scordilis testifies that “[t]he value . . . of Cabot’s work is that he points to the fact that even in this very controlled experiment, although phase is detectable in an A/B type of setup under many, many repetitions, it really opens the venue for exploration that a [person of ordinary skill in the art] would try to capitalize and explore further to develop a watermark.” Id. at 75:16–22 (emphasis added). In summary, Dr. Scordilis testifies that no references (including Cabot) cited in his declaration discuss phase encoding of a harmonic phase relative to a fundamental phase for watermarking, and Cabot merely opens the door so that a person of ordinary skill in the art would “try to . . . explore further to develop a watermark” using harmonic phase coding data. Id.” slip op. at 24

  Patent outcomesUS 7,289,961 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,289,961
• 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
• Ebates Performance Marketing, Inc. D/B/A Rakuten Rewards v. International Business Machines Corp.No claims unpatentable
  PTAB · Oct 2, 2023 · IPR2022-00438 · APJ Ken B Barrett · IPR · Final written decision

  Claims 14–28 were not shown unpatentable because the petition did not establish that the asserted combination taught interactive execution of the ordering and annotation function.

  RulingsFinal written decision

  • Expert testimonyOther

    “annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in computer science or a related field, plus at least one year of experience in the design and/or implementation of computerized information retrieval technology,” and that “[a]dditional education in the field of computer science may serve as a substitute for experience in the field.” Pet. 8 (citing Ex. 1003 ¶ 29). Patent Owner states that, “[f]or purposes of this proceeding, [Patent Owner] adopts Petitioner’s 4 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. proposed level of ordinary skill in the art.” PO Resp. 21 (citing Ex. 2011 ¶¶ 30–35). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7

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

    “wherein the ordering and annotation function is executed interactively at the time of each user query” contains two requirements: 1) how the function is executed (“interactively”) and when the function is executed (“at the time of each user query”). Petitioner, in effect, reads out of the claim the “interactively” requirement. Petitioner offers no persuasive reason as to why that is correct. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Petitioner, for its proposed claim construction of a single requirement, primarily relies on the Specification’s statement that “the ordering and Annotation step 345 is executed interactively, e.g., at the time of every user query.” Ex. 1001, 8:10–12; see Pet. Reply 12–13 (citing the same for the proposition that “[t]he ’676 patent specification also ties the terms together”); Tr. 16:3–12 (“it’s clear the specification is saying that interactively means at the time of every user query”). Petitioner’s reliance on this statement is misplaced. First, Petitioner agrees that the plain and ordinary meaning of “interactively” means “some sort of interaction with the system,” that the inventor did not utilize its own lexicography to redefine the term “interactively,” and that the Specification does not evidence a disavowal of claim scope. See Tr. 19:4–20. Consistent with that, Petitioner acknowledges that the quoted part of the Specification merely is an example, and is not defining “interactively” as limited to that example. See id. at 19:19–25. Second, Petitioner misreads the Specification as indicating that “at the time of every user query” is an example of “interactively.” See, e.g., id. at 21:25–22:1 (“the way I read this is at the time of every user query is modifying what interactively means”). Rather, the better reading of the Specification’s phrase “executed interactively, e.g., at the time of every user query” is that “at the time of every user query” (as opposed to some other time) is an example of when the function may be interactively executed, not that the two phrases on either side of the “e.g.” are synonymous. slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17

  Patent outcomesUS 6,785,676 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,785,676
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

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

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070

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.