- Jumio Corporation v. Facetec, Inc.No claims unpatentablePTAB · Jun 17, 2026 · IPR2025-00109 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–24 were not shown unpatentable because the petitioner failed to establish motivation to combine the references and failed to show the claimed different-distance image capture.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 11–12. In particular, based on the teachings of the ’910 Patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’910 Patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. 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’”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations — “substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques — are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 13–17; Pet. Reply 16–17. Those motivations might have been suitable had Tanii described techniques to verify three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 13–17, 25–28. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“distance from the user. Derakhshani teaches two different approaches (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 13 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Ex. 1005, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Ex. 1005, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject. Zhang also does not expressly disclose capturing a second image at a second distance. Petitioner acknowledges as much stating “[a]lthough Zhang does not expressly say that the second image is captured at a second distance different from the distance of the first image, this would have been obvious to a POSITA.” Pet. 61 (citing Ex. 1003 ¶ 1046). Because Zhang does not expressly disclose capturing a second image at a second distance, Petitioner once again relies on expert testimony to argue that the multiple images disclosed in Zhang would have been taken at different perspectives resulting from rotating or translating the position of the camera and that taking images at different distances would have enhanced Zhang’s homography-transformation procedure. Pet. 61–62 (citing Ex. 1003 ¶ 1046). From here Petitioner repeats many of the same arguments it made regarding the parallax approach from Derakhshani, except that these arguments are on even weaker footing because Zhang does not mention taking images by translating the position of the camera, nor even that the multiple images taken should be from different perspectives. Each of these assertions are made solely on the basis of Petitioner’s expert testimony, and as such are not persuasive. Pet. 61–62 (citing Ex. 1003 ¶¶ 1046). Petitioner’s argument that Zhang teaches capturing a second image at a second distance simply lacks sufficient support from Zhang’s disclosure.” slip op. at 25
Patent outcomesUS 11,874,910 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,874,910 - Jumio Corp. v. Facetec, Inc.No claims unpatentablePTAB · Jun 17, 2026 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1–24 were not shown unpatentable because the asserted combinations lacked adequate motivation to combine and did not teach capturing images at different distances.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 27–28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 13–14. In particular, based on the teachings of the ’938 patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’938 patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“images are three dimensional—let alone a technique that captures two images at different distances, compares the images for certain differences, and verifies three dimensionality based on those differences, as recited by the claim. Instead, Tanii describes a system that “corrects warp in which the perspective is exaggerated when an image is captured with the user’s face at close range.” Ex. 1007, code (57). In particular, Tanii recognizes the physical phenomenon of perspective distortion (fish-eye distortion) where “[i]f the image of the face of a person or the like is captured from a point that is relatively nearby, an image is obtained in which the perspective appears exaggerated,” i.e., the user image is warped or distorted. Id. ¶ 6; see id. ¶ 48, Fig. 4B. Tanii corrects such warped images by enlarging peripheral areas of the user image. Id. ¶¶ 55–56.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“distance from the user. Derakhshani teaches two different approaches: (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 12 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Derakhshani, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, instead, focused specifically on the use of the word “slid” in Derakhshani as indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Derakhshani, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject.” slip op. at 27
Patent outcomesUS 11,693,938 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 11,693,938 - Jumio Corporation v. Facetec, Inc.No claims unpatentablePTAB · Jun 17, 2026 · IPR2025-00107 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–20 were not determined unpatentable because the petition did not establish motivation to combine the references or that they taught capturing images at different distances.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 27–28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 8. In particular, based on the teachings of the ’606 Patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’606 Patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations—“substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques—are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 12–16; Pet. Reply 6–7. These motivations might have been suitable had Tanii described techniques for verifying three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 12–16, 19–23. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond with approaches for verifying three-dimensionality, and so does not adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusObjective indicia outweighedDecided for patent owner
“Patent Owner has demonstrated a nexus by showing that certain objective indicia, discussed below, are the direct result of the unique characteristics of the claimed invention. As discussed above in our summary of the ’606 Patent and reflected in our discussion of Petitioner’s obviousness challenges (see §§ I.F, II.E.1, II.E.2, II.E.3), the unique characteristics of the claim relate to verification of three dimensionality by comparing two images taken at different distances for perspective distortion. Indeed, those features are what distinguish over the prior art. See id. Furthermore, Patent Owner, supported by testimony from its Chief Technology Officer, Mr. Rose, asserts the unique characteristics claimed are reflected in the “3D liveness checks” its ZoOm software product provides because ZoOm “confirms that a user is 3D by comparing images taken at different distances for expected differences in biometric data, such as the presence of appropriate perspective distortion and differences.” PO Resp. 25 (citing Ex. 2059 ¶ 49). Patent Owner’s assertion is further supported by a “FaceTec Software Explanation” stating that its software uses “near & far image data . . . to determine if the expected differences in perspective distortion are present in the image data” and, from that, “decides if there is sufficient evidence in the image data to conclude with a high degree [of] confidence that the image data contains first-generation biometric data captured in real-time from a live, physically present user.” Ex. 2067; see PO Resp. 25–26. As such, the 3D liveness checks provided by Patent Owner’s software are indicative of the unique characteristics of the claimed invention and, as we discuss below, certain objective indicia of nonobviousness have a direct nexus to the 3D liveness checks of its software.” slip op. at 30
Patent outcomesUS 11,157,606 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,157,606 - Jumio Corp. v. Facetec, Inc.No claims unpatentablePTAB · Jun 17, 2026 · IPR2025-00106 · APJ Nabeel U Khan · IPR · Final written decision
The Board determined claims 1–20 were not unpatentable because Jumio did not show sufficient motivation to combine the references or that they taught capturing images at different distances.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 11–12. In particular, based on the teachings of the ’471 patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’471 patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations—“substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques—are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 12–16; Pet. Reply 6–7. These motivations might have been suitable had Tanii described techniques for verifying three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 13–17, 25–28. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond with approaches for verifying three-dimensionality, and so does not adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“none of the relied upon references teach capturing two images at two different distances, as required by limitations 1[d3] and 1[d4]. These limitations recite “moving the camera from a first location to a second location, the second location being a second distance from the user” and “capturing at least one second image of the user taken with the camera of the computing device at the second distance from the user, the second distance being different than the first distance.” Derakhshani does not teach capturing a second image at a second distance from the user. Derakhshani teaches two different approaches: (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 13 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Ex. 1005, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, instead, focused specifically on the use of the word “slid” in Derakhshani as indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Derakhshani, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject.” slip op. at 27
Patent outcomesUS 10,776,471 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,776,471 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.No claims unpatentablePTAB · Mar 4, 2026 · IPR2024-01223 · APJ Garth D Baer · IPR · Final written decision
Claims 34–37 and 40–46 were not shown unpatentable because Suzuki’s organic barrier layer was not shown to meet the agreed construction of “planarization layer.”
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for patent owner
“layer of material that planarizes such that the propagation of defects from one layer to another layer can be interrupted and the topography of the underlying layer and/or structure is not reproduced.” PO Resp. 10. According to Patent Owner, we should adopt this construction because the parties agreed to it in a related district court proceeding and it is supported by the intrinsic evidence. Id. at 10–14. Petitioner does not dispute this 1 Japanese Published Application No. H09-245964, Pub. Sep. 19, 1997 (Ex. 1010, “Kijima”) (English translation). 2 US 6,198,217, Pub. Mar. 6, 2001 (Ex. 1012, “Suzuki”). 3 US 6,087,196, Pub. July 11, 2000 (Ex. 1013, “Sturm”). 4 WO 2001/08242, Pub. Feb. 1, 2001 (Ex. 1016, “Duthaler”). 5 Japanese Published Application No. H10-41069, Pub. Feb. 13, 1998 (Ex. 1014, “Fujimori”) (English translation). construction. Paper 33, 6:17–8:1; see Pet. Reply 5. We adopt the parties’ agreed-to construction.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner argues Suzuki’s organic barrier layer does not reproduce the underlying layer’s/structure’s topography because “Suzuki’s organic barrier layer 20 ‘makes a smooth surface on the relatively irregular surface of the cathode 18.’” Pet. Reply 7 (quoting Ex. 1012, 5:59–67). We disagree. Instead, we agree with Patent Owner that Suzuki’s irregular-surface smoothing describes covering defects, not suppressing the underlying cathode’s topography. PO Sur-reply 5. The smooth-surface passage that Petitioner highlights comes immediately after two sentences describing inevitable “defects,” “pinholes,” and “foreign matter” on the cathode surface and before a sentence describing “ensuring the formation of the layer 22, which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. We agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6
- Expert testimonyPatent owner expert creditedDecided for patent owner
“which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 9
Patent outcomesUS 6,949,389 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,949,389 - Nearmap US, Inc. v. Pictometry International Corp.No claims unpatentablePTAB · Oct 30, 2023 · IPR2022-00735 · APJ Russell E Cass · IPR · Final written decision
Claims 1–16 were not shown unpatentable because the Snavely-based combinations did not teach a “primary oblique image” as construed.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner’s construction of the term “primary oblique image” as “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” This construction is supported by the ’518 patent Specification, which includes a listing of “Terminology” that contains the following definition for the term “primary oblique image”: Primary oblique image—a displayed oblique image that can be considered ‘in front of’ the other displayed images. The primary oblique image can also be a master image. Ex. 1001, 6:25:31–34.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the full trial record, we find that Petitioner has not sufficiently shown that the proposed combination includes a “primary oblique image” as properly construed. As discussed above, we construe the term “primary oblique image” to require “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” See supra § II.A.1(b). In its papers, Petitioner does not demonstrate that Snavely discloses a “primary oblique image” that can be considered “in front of” the other displayed images. To the contrary, we agree with and find credible Dr. Bajaj’s testimony that the “main view” of Snavely’s Figure 5, which Petitioner points to as the “primary oblique image,” is “behind the other displayed images in overlay panes,” such as the information pane, thumbnail pane, and map pane, and “therefore, necessarily cannot be considered ‘in front of’ the other displayed images.” Ex. 2007 ¶ 60; see Ex. 1004, Fig. 5; PO Resp. 26. Our conclusion is also supported by the fact that Snavely refers to the information, map, and thumbnail panes as “overlay panes.” Ex. 1004, 5 (“The components of this window are the main view, which fills the window, and three overlay panes: an information and search pane on the left, a thumbnail pane along the bottom, and a map pane in the upper-right corner.”). We agree with and find credible Dr. Bajaj’s testimony that Snavely’s description of these panes as “overlay” panes confirms that “the main view image is behind the images shown in the map pane, the information pane, and the thumbnail pane.” Ex. 2007 ¶ 61 (citing Ex. 1004, 5). Additional support is found in Dr. Forsyth’s deposition testimony, where he explained that one of ordinary skill would have understood “overlay panes” to be “on top of” a main display:” slip op. at 38
- ExcludeMotion to exclude, deniedDenied
“E. Patent Owner’s Motion to Strike and Motion to Exclude Patent Owner filed a Motion to Strike certain portions of the Third Munford Declaration (Exhibit 1020) and its Appendices, which Petitioner submitted to show that Snavely and Irani were publicly accessible before the critical date of the ’518 patent. Paper 30. Patent Owner also filed a Motion to Exclude certain Appendices of the Second Munford Declaration (Exhibit 1016) and Third Munford Declaration, which Petitioner also submitted to show public accessibility of Snavely and Irani. Paper 35. Because, as discussed above, we find that Petitioner has not proven by a preponderance of the evidence that the challenged claims would have been obvious over Snavely, Balfour, Irani, and Yelton, we need not reach whether Petitioner has sufficiently shown that Snavely and Irani were publicly accessible before the critical date. We, therefore, deny Patent Owner’s Motion to Strike and Motion to Exclude as moot.” slip op. at 40
Patent outcomesUS 8,593,518 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,593,518 - Unified Patents, LLC v. Arigna Technology Ltd.No claims unpatentablePTAB · Jun 13, 2023 · IPR2022-00285 · APJ Garth D Baer · IPR · Final written decision
Claim 7 was not shown unpatentable as obvious over Majumdar and Cowles because Majumdar’s switching element 13 does not participate in reverse level shifting.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner’s description is consistent with the prior art and patent specification before us and is supported by credible expert testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). We adopt Patent Owner’s description. However, our patentability analysis would be the same under Petitioner’s formulation.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION Although the parties note several claim constructions from related district court proceedings, neither party asserts that additional claim construction is necessary for our determination whether to institute inter partes review. See Pet. 12–13; PO Resp. 35–36. We agree with the parties that we do not need to explicitly construe any terms to determine unpatentability. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“because Majumdar’s “circuit elements 13 and 14 identified in the Petition as being included in the reverse level shift circuit reside exclusively in the forward level shift circuit.” PO Resp. 41. We agree with Patent Owner’s argument. Petitioner corresponds the output of switching element 13 to the claimed “output line of said reverse level shift part.” Pet. 43. However, as Patent Owner explains, switching element 13 and its output are involved only in forward level shifting—from lower potential to higher potential—not in reverse level shifting. See PO Resp. 41; PO Sur-reply 2–8.” slip op. at 8
Patent outcomesUS 7,049,850 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,049,850 - BMW Of North America, LLC v. Arigna Technology LimitedNo claims unpatentablePTAB · Mar 9, 2023 · IPR2022-00776 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–32 were not shown unpatentable because Petitioner failed to establish that the asserted art taught the claimed control loop and related limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed definition, as compared to Patent Owner’s proposed definition, would require a higher degree of education or substitute work experience for a person who had two years of industry or academic experience. Compare Pet. 6, with PO Resp. 20. Patent Owner’s proposed definition requires that the industry or academic experience be more specifically related to “analog current or voltage amplifiers.” Compare 8 Neither party presents evidence or argument on the fourth Graham factor. We therefore do not consider that factor in this decision. why its proposed level of skill is correct. See Pet. 6; PO Resp. 20. Based on this record, we apply the Petitioner’s proposal for level of ordinary skill in the art at the time of the invention, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Because our decision here does not require the resolution of this controversy or the construction of any other claim terms, we do not construe Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12
- BurdenNot shown unpatentable
“As Patent Owner argues, Petitioner has not clearly asserted or met its burden to prove what in Soneda teaches or suggests the “control loop” of limitations 1e and 1g. PO Resp. 53–55. In the Petition, Petitioner argues that “the controlled current source and the current amplifier form a control loop” and describes this as “shown” in an annotated Figure 1 of Soneda. Pet. 21. But this annotated figure does not include any annotations indicating what elements are in the control loop, and no loop can be seen formed by the identified controlled current source and the current amplifier in this annotated figure. In its Reply, Petitioner shifts to an argument that “[t]he control loop in Soneda comprises a PMOS device, or transistor, (11) and a capacitor (13).” Pet. Reply 11. We recognize that by using the term “comprising,” which in a claim-interpretation context has an open-ended nature, Petitioner may not be arguing that only these two elements of Soneda are included in the control loop. However, Petitioner still does not make clear what it argues is a control loop. While Petitioner protests that “Patent Owner wrongly faults the Petition for not mapping the teaching of Soneda . . . to what it calls the ‘classical control loop,’” we agree with Patent Owner that Petitioner, which has the burden of showing with particularity why the challenged claims are unpatentable, has not identified anything in Soneda” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As Patent Owner argues, Petitioner has not clearly asserted or met its burden to prove what in Soneda teaches or suggests the “control loop” of limitations 1e and 1g. PO Resp. 53–55. In the Petition, Petitioner argues that “the controlled current source and the current amplifier form a control loop” and describes this as “shown” in an annotated Figure 1 of Soneda. Pet. 21. But this annotated figure does not include any annotations indicating what elements are in the control loop, and no loop can be seen formed by the identified controlled current source and the current amplifier in this annotated figure. In its Reply, Petitioner shifts to an argument that “[t]he control loop in Soneda comprises a PMOS device, or transistor, (11) and a capacitor (13).” Pet. Reply 11. We recognize that by using the term “comprising,” which in a claim-interpretation context has an open-ended nature, Petitioner may not be arguing that only these two elements of Soneda are included in the control loop. However, Petitioner still does not make clear what it argues is a control loop. While Petitioner protests that “Patent Owner wrongly faults the Petition for not mapping the teaching of Soneda . . . to what it calls the ‘classical control loop,’” we agree with Patent Owner that Petitioner, which has the burden of showing with particularity why the challenged claims are unpatentable, has not identified anything in Soneda” slip op. at 22
Patent outcomesUS 8,289,082 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,289,082 - BMW Of North America, LLC v. Arigna Technology LimitedNo claims unpatentablePTAB · Mar 9, 2023 · IPR2022-00737 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–32 were not shown unpatentable because Petitioner failed to prove the asserted obviousness grounds taught the claimed control loop and regulation elements.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed definition, as compared to Patent Owner’s proposed definition, would require a higher degree of education or substitute work experience for a person who had two years of industry or academic experience. Compare Pet. 6, with PO Resp. 20. Patent Owner’s proposed definition requires that the industry or academic experience be more specifically related to “analog current or voltage amplifiers.” Compare 8 Neither party presents evidence or argument on the fourth Graham factor. We therefore do not consider that factor in this decision. why its proposed level of skill is correct. See Pet. 6; PO Resp. 20. Based on this record, we apply the Petitioner’s proposal for level of ordinary skill in the art at the time of the invention, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner contends that this claim construction is incorrect as ignoring the plain language of the claim. PO Resp. 33–44; PO Sur-reply 2– 6. For its part, Petitioner adopts and argues for the preliminary construction in the Decision on Institution. Pet. Reply 2–5. Because our decision here does not require the resolution of this controversy or the construction of any other claim terms, we do not construe Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12
- BurdenNot shown unpatentable
“As Patent Owner argues, Petitioner has not clearly asserted or met its burden to prove what in Soneda teaches or suggests the “control loop” of limitations 1e and 1g. PO Resp. 53–55. In the Petition, Petitioner argues that “the controlled current source and the current amplifier form a control loop” and describes this as “shown” in an annotated Figure 1 of Soneda. Pet. 21. But this annotated figure does not include any annotations indicating what elements are in the control loop, and no loop can be seen formed by the identified controlled current source and the current amplifier in this annotated figure. In its Reply, Petitioner shifts to an argument that “[t]he control loop in Soneda comprises a PMOS device, or transistor, (11) and a capacitor (13).” Pet. Reply 11. We recognize that by using the term “comprising,” which in a claim-interpretation context has an open-ended nature, Petitioner may not be arguing that only these two elements of Soneda are included in the control loop. However, Petitioner still does not make clear what it argues is a control loop. While Petitioner protests that “Patent Owner wrongly faults the Petition for not mapping the teaching of Soneda . . . to what it calls the ‘classical control loop,’” we agree with Patent Owner that Petitioner, which has the burden of showing with particularity why the challenged claims are unpatentable, has not identified anything in Soneda” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As Patent Owner argues, Petitioner has not clearly asserted or met its burden to prove what in Soneda teaches or suggests the “control loop” of limitations 1e and 1g. PO Resp. 53–55. In the Petition, Petitioner argues that “the controlled current source and the current amplifier form a control loop” and describes this as “shown” in an annotated Figure 1 of Soneda. Pet. 21. But this annotated figure does not include any annotations indicating what elements are in the control loop, and no loop can be seen formed by the identified controlled current source and the current amplifier in this annotated figure. In its Reply, Petitioner shifts to an argument that “[t]he control loop in Soneda comprises a PMOS device, or transistor, (11) and a capacitor (13).” Pet. Reply 11. We recognize that by using the term “comprising,” which in a claim-interpretation context has an open-ended nature, Petitioner may not be arguing that only these two elements of Soneda are included in the control loop. However, Petitioner still does not make clear what it argues is a control loop. While Petitioner protests that “Patent Owner wrongly faults the Petition for not mapping the teaching of Soneda . . . to what it calls the ‘classical control loop,’” we agree with Patent Owner that Petitioner, which has the burden of showing with particularity why the challenged claims are unpatentable, has not identified anything in Soneda 12. Additionally, with respect to the identification of the transistor and capacitor of the controlled current source as the control loop (Pet. Reply 11), as Patent Owner notes, claim 1 requires (limitation 1g) that the controlled current source at least at times is “acting as a regulation element in the control loop” (Ex. 1001, 10:30–31). PO Resp. 52. An identification of elements within the controlled current source as the only elements in the control loop is not consistent with the requirement that the controlled current source acts as a regulation element in control loop. Id. at 55; PO Sur-reply 15–16. Rather, an argument that the controlled current source and the current amplifier form a control loop (Pet. 21) appears more consistent with this limitation, however it is not clearly described or supported with evidence by Petitioner. Petitioner argues that the ’082 patent discloses that its control loop is formed when the first switching device S1 closes and the output of the adjusting circuit is connected to the input of the controlled current source and the capacitor 212 is charged to a specific current. Pet. Reply 10–11 (citing Ex. 1001, 7:45–53, 7:58–65, 8:1–21, Fig. 2a). Petitioner contends that Soneda teaches “this same circuit and method for cancelling offset.” Id. at 11–12 (citing Ex. 1005, 58, Fig. 1). But, as Patent Owner shows, the method described in the ’082 patent includes the controlled current source 210 acting as a regulation element in a loop that includes additional elements, including elements of the current amplifier. PO Resp. 49–50. This distinction is not persuasively addressed by Petitioner or its identification of only elements of Soneda’s transistor 11 and capacitor 13 as included in the control loop. See Pet. Reply 9–10 (discussing the “stage of operation” in which a capacitor is charged until a steady state is input of the controlled current source to an output of the current amplifier). For these reasons, we conclude that Petitioner has not met its burden to prove by a preponderance of the evidence that Soneda teaches the elements of claim 1.” slip op. at 22
Patent outcomesUS 8,289,082 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,289,082 - BMW Of North America, LLC v. Arigna Technology LimitedNo claims unpatentablePTAB · Mar 9, 2023 · IPR2021-01531 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–32 were not shown unpatentable because Petitioner did not establish that Soneda, alone or with other references, teaches the claimed control loop.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed definition, as compared to Patent Owner’s proposed definition, would require a higher degree of education or substitute work experience for a person who had two years of industry or academic experience. Compare Pet. 6, with PO Resp. 20. Patent Owner’s proposed definition requires that the industry or academic experience be more specifically related to “analog current or voltage amplifiers.” Compare 8 Neither party presents evidence or argument on the fourth Graham factor. We therefore do not consider that factor in this decision. why its proposed level of skill is correct. See Pet. 6; PO Resp. 20. Based on this record, we apply the Petitioner’s proposal for level of ordinary skill in the art at the time of the invention, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction In the Decision on Institution, we construed limitation 1d, which requires that “an output of the controlled current source is connectable to the current amplifier for producing an output current of the controlled current source in the current amplifier.” Ex. 1001, 10:19–22; Inst. Dec. 13–16. While this construction was not requested by the parties, we noted that the parties appeared to have conflicting constructions of limitation 1d. Inst. Dec. 13–14 (citing Pet. 16–20; Paper 6 (Patent Owner’s Preliminary Response), 21, 25–30)). We reviewed the intrinsic evidence, and without providing a complete construction, we noted that, for the purposes of institution, we would construe the limitation to not require the connection of the output of the controlled current source to an internal component of the current amplifier. Id. at 14–16. Patent Owner contends that this claim construction is incorrect as ignoring the plain language of the claim. PO Resp. 33–44; PO Sur-reply 2– 6. For its part, Petitioner adopts and argues for the preliminary construction in the Decision on Institution. Pet. Reply 2–5. Because our decision here does not require the resolution of this controversy or the construction of any other claim terms, we do not construe Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 12
- BurdenNot shown unpatentable
“As Patent Owner argues, Petitioner has not clearly asserted or met its burden to prove what in Soneda teaches or suggests the “control loop” of limitations 1e and 1g. PO Resp. 53–55. In the Petition, Petitioner argues that “the controlled current source and the current amplifier form a control loop” and describes this as “shown” in an annotated Figure 1 of Soneda. Pet. 21. But this annotated figure does not include any annotations indicating what elements are in the control loop, and no loop can be seen formed by the identified controlled current source and the current amplifier in this annotated figure. In its Reply, Petitioner shifts to an argument that “[t]he control loop in Soneda comprises a PMOS device, or transistor, (11) and a capacitor (13).” Pet. Reply 11. We recognize that by using the term “comprising,” which in a claim-interpretation context has an open-ended nature, Petitioner may not be arguing that only these two elements of Soneda are included in the control loop. However, Petitioner still does not make clear what it argues is a control loop. While Petitioner protests that “Patent Owner wrongly faults the Petition for not mapping the teaching of Soneda . . . to what it calls the ‘classical control loop,’” we agree with Patent Owner that Petitioner, which has the burden of showing with particularity why the challenged claims are unpatentable, has not identified anything in Soneda” slip op. at 22
Patent outcomesUS 8,289,082 not shown unpatentableClaim constructioncites KSR · GrahamPatents in suitUS 8,289,082
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.