• Samsara Inc. v. Motive Technologies, Inc.No claims unpatentable
  PTAB · Jul 29, 2026 · IPR2025-00574 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–7 were not shown unpatentable because the asserted combinations did not establish the claimed video overlay and transmission for manual review.

  RulingsFinal written decision

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

    “We agree with Patent Owner that Petitioner’s contentions in this ground do not cure the issues for limitations 1D and 1E. Petitioner’s contentions in this ground involve combining Khan and Ali’s teachings of identifying a horizon line and lane lines with Choe. For example, Petitioner argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have combined known elements according to known methods to yield predictable results” and that “[i]mplementing these known mathematical models in Choe’s calibration system, according to their known functions, would have yielded predictable results.” Pet. 39. Petitioner further argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have used a known technique (predictive models) to improve similar devices in the same way” and that “[u]sing predictive models for Choe’s lane and horizon prediction would have also applied a known technique (predictive models) to a known device (a manual annotator device) ready for improvement.” Pet. 40. Petitioner’s proposed combination, therefore, still relies on Choe’s teachings of transmitting an overlaid image to an annotator device. We note that Petitioner asserts that, “[o]nce Khan in view of Ali identifies the horizon and lane lines, it overlays the horizon line and/or lane lines on the video, as shown in the screenshots below.” Pet. 41–42. Although Petitioner mentions Khan and Ali’s teachings with respect to video here, Petitioner does not adequately explain how the teaching of an overlaid video would be combined with Choe’s single image annotator teachings. As discussed above, Choe discloses transmitting a single overlaid image to the annotator” slip op. at 23

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

    “Thus, Petitioner has not provided sufficient evidence and argument to explain how the additional teachings of Khan and Ali teach limitations 1D and 1E in combination with Choe. Petitioner, therefore, has not demonstrated unpatentability of claims 1–5 by a preponderance of the evidence. F. Obviousness over Choe and Workman (Claims 1–4) Petitioner asserts that claims 1–4 would have been obvious over the combined teachings of Choe and Workman. Pet. 47–52; Pet. Reply 26–30. Petitioner asserts that, “if [Patent Owner] alleges that Choe does not explicitly disclose which predictive models it uses or whether it uses predictive models to identify the horizon line, a [person of ordinary skill in the art] would have searched for references that use predictive models and how such models were used,” which “would have led to Workman, which discloses predictive models to identify the horizon line.” Pet. 47. According to Petitioner, “[u]sing Workman’s predictive model to identify the horizon line would also have merely been combining known elements ([convolutional neural networks (CNNs)] and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way.” Pet. 48–49. Thus, Petitioner relies on Workman to teach a predictive model to identify a horizon line. See Pet. 47–49. Choe with respect to limitations 1D and 1E. Indeed, Workman involves horizon line estimation in single images. See Ex. 1011, 10 (§ 5) (“We introduced Horizon Lines in the Wild (HLW), a new dataset for single image horizon line estimation, to address the limitations of existing horizon line detection datasets.”). Petitioner, therefore, has not demonstrated unpatentability of claims 1–4 by a preponderance of the evidence.” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner criticizes Petitioner’s proposed level of ordinary skill for not requiring “any training or experience in ‘automotive systems,’ precisely what the ’580 [p]atent relates to.” PO Resp. 7. According to Patent Owner, a person of ordinary skill in the art would have had “a training and/or experience in design of software for camera/sensor systems in the automotive industry.” PO Resp. 8–9 (citing Ex. 2003 ¶ 35).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  Patent outcomesUS 11,875,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,875,580
• Dril-Quip, Inc. v. FMC Technologies, Inc.No claims unpatentable
  PTAB · Aug 1, 2022 · PGR2021-00049 · APJ George R Hoskins · PGR · Final written decision

  Claims 1–11, 14, and 15 were not shown unpatentable under § 103 over Maersk or Broussard, due to missing claim limitations and insufficient motivation to modify.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner contends this person “would have had a Bachelor’s degree in mechanical or petroleum engineering or similar subject matter, and at least approximately two years of work or research experience in subsea oil and gas completion systems related to the analysis, design, development, and/or manufacturing of equipment for subsea completion systems for use in subsea oil and gas wells.” PO Resp. 16; Ex. 2002 ¶ 11. Thus, the parties essentially agree on the level of ordinary skill in the art to be applied in this proceeding. Their agreement is consistent with the level of skill reflected in the ’921 patent and the prior art of record. Further, we would reach the same decision regardless of whether we adopt Petitioner’s or Patent Owner’s formulation. We therefore do not need to delve into any fine distinctions between the two formulations.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “However, Maersk’s other two seal barriers—a ring seal, and a production packer—both appear to be passive barriers. See Ex. 2002 ¶ 60 (annotating Ex. 1019 to identify the ring seal); Ex. 1031 ¶ 33 (stating that passive barriers “include, inter alia . . . packers”). Dr. Hilbert does not explain persuasively why adding a third passive barrier would materially improve the sealing versus Maersk’s three existing barriers, so as to justify the extensive modifications required to re-route the annular fluid through the bore stab. See Ex. 1031 ¶¶ 33–35; id. ¶¶ 13–44 (discussing some of the modifications required). Further, Mr. Parks persuasively testifies, in opposition to Dr. Hilbert’s motivation testimony, that “deeper wells and increased annulus fluid pressure would not have led a [person of ordinary skill in the art] to modify Maersk to provide additional protective barriers.” Ex. 2002 ¶¶ 58, 60–63 (emphasis added). Some of this testimony has already been cited above. Additionally, Mr. Parks notably served on the editorial committee for API 17D. See id. ¶¶ 6, 63. He testifies that a person of ordinary skill in the art would have “recognized that API 17D does not support” Dr. Hilbert’s testimony, “because API 17D’s two-barrier requirement is not dependent on depth or pressure.” Id. ¶ 62 (citing Ex. 1022, 158 (§ 9.2.7)) (emphasis added). In particular: “there are practical considerations underlying the API 17D requirement for two barriers, and the lack of any specification for more than two barriers.” Id. ¶ 63. This testimony is supported by API 17D, which requires a minimum of two seal barriers for any system with a rated working pressure falling within the entire 5000–15000 psi range contemplated by API 17D. See Ex. 1022, 158 (§§ 9.2.7–9.2.8). Mr. Parks further testifies: “Two barriers, appropriately specified for” slip op. at 43

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “1. “production/annulus bore stab” In the Institution Decision, we determined the preamble of claim 1 (“A production/annulus bore stab”) is a limitation to the claim, which was a disputed issue at the time. See Inst. Dec. 16–20. Neither party has objected to our preliminary determination in their post-institution briefs. See, e.g., PO Resp. 15–16; Pet. Reply; Tr. 8:24–9:13. We, therefore, again conclude here that the preamble of claim 1 is a limitation to the claim, for the reasons provided in the Institution Decision.” slip op. at 9

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

    “We start our analysis with the claim language. The claim term in dispute is simply a “cylindrical” outer surface. The parties do not cite, and we do not discern, any other contextual claim language that might elucidate or limit the plain and ordinary meaning of “cylindrical.” Petitioner’s gloss on this term as connoting “an overall cylinder-like shape” is an unpersuasive attempt to broaden the meaning of the plain term “cylindrical.” It also would unhelpfully replace our present inquiry (What is a “cylindrical outer surface”?) with yet another inquiry (What is “an overall cylinder-like shape”?). Turning to the ’921 patent specification, we find that it discloses three different and distinct cylindrical outer surfaces: outermost cylindrical surface 102S, first cylindrical outer surface 102X, and second cylindrical outer surface 102Y. See Ex. 1001, Fig. 6, 3:47–51, 3:65–4:5. The distinctness of these three surfaces can be seen in Figures 5, 6, 8, 9, and 10. Petitioner’s attempt to combine these three distinct outer cylindrical surfaces, into one allegedly cylindrical outer surface (see Petitioner’s yellow annotations to Figure 6, supra), is not supported by the ’921 patent specification, which never describes the entire axial extent of the outer surface of bore stab body 102 as being “cylindrical.”” slip op. at 12

  Patent outcomesUS 10,689,921 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,689,921
• Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCNo claims unpatentable
  PTAB · Mar 7, 2022 · IPR2020-01367 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–36 were not shown unpatentable because Kennewick did not teach the claimed ambiguity of words having different meanings in different contexts or the required context identification.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (a “POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4–5 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not dispute Petitioner’s assertion, and Patent Owner and its declarant, Dr. Gershman, both apply Petitioner’s definition of a POSITA. Resp. 3. On this record and given the absence of any dispute, we adopt and apply Petitioner’s proposed formulation regarding the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355.” slip op. at 8

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In its Petition, Petitioner asks us to construe the “implicit hypothesis” term of claims 38, 40, and 42. Pet. 7–8. As discussed above, however, Patent Owner filed a disclaimer that eliminated these claims from this proceeding. Petitioner does not ask us to construe any terms in the remaining challenged claims. See id.; see generally Reply. Patent Owner also does not ask us to construe any claim terms. See generally Response. On this record, we decline to adopt constructions of any claims. See Nidec, 868 F.3d at 1017. slip op. at 9

  • Expert testimonyPetitioner expert discountedMixed

    “Dr. Smyth’s declaration testimony about words having different meanings in different contexts is unpersuasive. Dr. Smyth testifies that the keyword “‘temperature’ could be interpreted as an outdoor temperature or as a body temperature depending on context.” See Ex. 1002 ¶ 69. This testimony is not persuasive because the word “temperature” refers to a measurement of warmth or coolness in both examples. That is, “temperature” has the same meaning in both contexts. Moreover, as Dr. Gershman points out, Kennewick does not teach or suggest a body temperature. Ex. 2001 ¶ 26. Dr. Smyth’s testimony is unpersuasive for this additional reason. See Ex. 1002 ¶ 69.” slip op. at 17

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

    “forth by both parties, we are not persuaded that Kennewick teaches or suggests that the word “temperature” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. As detailed above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with the ordinary and customary language of the claims, the specification of the ’681 patent, and the disclosure of Kennewick. See id. In contrast, Petitioner’s arguments are inconsistent with the ordinary and customary meaning of the claim language and the specification of the ’681 patent, and are not adequately supported by the disclosure of Kennewick. On this record, and having considered the evidence and arguments put forth by both parties, we also are not persuaded that Kennewick teaches or suggests that the phrase “what about flight one hundred and twenty too?” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 6–7; Ex. 2001 ¶¶ 28–30. Moreover, even if the “flight” example did describe two contexts (one in which “flight 122” exists, and one in which it does not), Petitioner’s argument would still fail because Petitioner has offered no persuasive evidence that Kennewick teaches or suggests identifying one of these two alleged contexts based on Kennewick’s short-term shared information (dialog history) and long-term shared information (user profiles) as required by independent claims 1, 13, and 25. For the reasons explained above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with and supported by the claims and specification of the ’681 patent and the disclosure of Kennewick. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. In contrast, Petitioner’s arguments are not consistent with or supported by the ordinary and customary meaning of the claim language, the specification of the ’681 patent, or the disclosure of Kennewick.” slip op. at 20

  Patent outcomesUS 8,073,681 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,073,681
• Unified Patents, LLC v. 2bcom, LLCNo claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00996 · APJ Sharon Fenick · IPR · Final written decision

  Claims 12–17 and 19–21 were not shown unpatentable under either §103 ground because Petitioner failed to prove that Nüsser was publicly accessible prior art.

  RulingsFinal written decision

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

    “under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); see also Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Because these arguments relate to a print version of the conference proceedings, they amount to new arguments that Petitioner chose not to make in the Petition and are not responsive to Patent Owner’s arguments asserting flaws in Petitioner’s contentions and evidence, which related to whether the digital version of Nüsser, presented here as Exhibit 1006, was available on the critical date. Rather, they raise new issues regarding actual dissemination of or the availability of a print version of the proceedings for the conference. See Acceleration Bay, LLC., 908 F.3d at 775; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). New evidence may be submitted to respond to arguments raised in a prior brief or as rebuttal evidence, however, in this case, we do not agree that the new evidence and arguments here are responsive to Patent Owner’s arguments, but rather they appear to take a “new direction with a new approach.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, November 2019 (“CTPG”),6 73–75. Petitioner does not show or assert that the print proceedings contain the same version of Nüsser as that presented as Exhibit 1006. Nor has Petitioner filed a copy of Nüsser from a print version of the proceedings” slip op. at 24

  • ExcludeNot reached

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude all or part of Exhibits 1006, 1007, 1010, 1012, 1015–1018, 1023–1028, 1036–1040, 1045, and 1046. PO Mot. Exclude 1. Because we ultimately find for Patent Owner without excluding the documents listed in Patent Owner’s Motion, we dismiss as moot Patent Owner’s Motion to Exclude.” slip op. at 26

  Patent outcomesUS 7,127,210 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,127,210
• Intel Corporation v. XMTT, Inc.No claims unpatentable
  PTAB · May 11, 2021 · IPR2020-00145 · APJ Phillip J Kauffman · IPR · Final written decision

  Claims 1–39 were not shown unpatentable because the petition did not address the construed system-level processing modes, and Nakaya’s synchronization did not mark the claimed transition.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “adapted to execute “primarily” in serial, and serial memory adapted to store data for use by the serial processor in executing the software instructions “substantially” in serial. Ex. 1001, 3:1–6. That embodiment also includes a plurality of parallel processors adapted to execute “substantially” in parallel. Id. at 2:59–67. Significantly, independent claim 32 refers to the serial processor both as adapted to execute “primarily” in serial, and as adapted to execute “substantially” in serial. Ex. 1001, 16:17–23. In light of these teachings, we find that the Specification uses the terms “primarily” and “substantially” interchangeably. In a context similar to that of the claims at issue, “substantially” has been interpreted to mean “largely but not wholly that which is specified.” See, e.g., York Prods. v. Cent. Tractor and Farm & Family Ctr., 99 F.3d 1568, 1573 (Fed. Cir. 1996). That interpretation is consistent with the claim language and the Specification. Returning to the language of claim 1, we determine that “a serial processing mode” refers to the system executing primarily in serial on the serial processor. Likewise, “a parallel processing mode” refers to the system executing primarily in parallel on the parallel processors. The Specification supports that interpretation. Specifically, the Specification describes that the system may make a hard switch from “serial processing mode” to “parallel processing mode,” or may switch from “primarily serial processing” to “primarily parallel processing.” Ex. 1001, 11:46–52; see also id. at 1:58–61, 3:34–35; 5:6–48, 6:54–56; 8:3–5; 10:36–41. Therefore, the Specification explicitly describes primarily serial processing as an example of a serial processing mode, and likewise describes primarily parallel processing as an example of a parallel processing mode. This suggests that a serial processor as claimed must be adapted to execute in a serial processing mode (a mode of executing so that the system is executing primarily in serial). Likewise, the parallel processor must be adapted to execute in a parallel processing mode (a mode of executing so that the system is executing primarily in serial). We return to the language of claim 1 having determined that: “adapted to” means “configured to,” “primarily” means “largely but not wholly,” and the serial and parallel processing modes each refer to the execution of the system as a whole. Thus, the claimed serial processor must be configured to have a serial processing mode (a mode where the system executes largely but not wholly in serial on the serial processor). Likewise, the parallel processors must be configured to have a parallel processing mode (a mode where the system executes largely but not wholly in parallel on the parallel processors).” slip op. at 10

  • Skill levelSkill level board ownOther

    “There is very little difference between the skill levels asserted by the parties. As we pointed out in the Institution Decision, the parties only disagree with regard to two of the factors relevant to the level of skill in the art. See Dec. 12. There is no dispute with regard to the many other factors that influence the level of skill in the art. Further, also as pointed out in the Institution Decision, Patent Owner’s broader recitation of experience in “general computer architecture” would include experience with both serial and parallel processing. Id. In the Response, Patent Owner chose not to dispute other factors of the level of skill inquiry, and chose not to dispute that general experience would include experience with parallel computing architectures.5 We determine that a person of ordinary skill in the art at the time of ’388 patent would have had either a Bachelor’s or a Master’s degree in electrical engineering, computer engineering, or a related field, and would have had about three years of experience in computer architecture that 5 We informed the parties they could further address the level of skill during the trial. Dec. 13. included experience with both serial and parallel processing. Our reasoning follows.” slip op. at 15

  • BurdenFwd all claims patentableNot shown unpatentable

    “We agree with Patent Owner that the Petition must identify how the construed claim is unpatentable. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). We analyze the limitation at issue as addressed by the Petition.” slip op. at 25

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

    “Nakaya’s system changes the ratio of serial to parallel processors at T6, not at T8 (synchronization). Specifically, prior to T6, the system is processing on four serial and four parallel processors, and after time T6, the system is processing on one serial and seven parallel processors. Nakaya’s processor ratio change is akin to the claimed transition from serial processing mode to parallel processing mode. At T8, the ratio of serial to parallel processors being used by the system remains the same (one to seven). That is, at the moment Petitioner contends corresponds to the claimed transition from serial to parallel processing, there is actually no change in the ratio of serial to parallel processors in use by Nakaya’s system. We emphasize that the Petition is deficient because it fails to adequately address how the prior art discloses or suggests a serial processor configured to execute so that the system executes largely but not wholly in serial on the serial processor. Likewise, the Petition does not adequately address how the prior art discloses or suggests a parallel processor adapted to execute so that the system executes largely but not wholly in parallel on the parallel processor.” slip op. at 27

  Patent outcomesUS 7,707,388 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,707,388
• Intel Corporation v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jul 8, 2020 · IPR2019-00049 · APJ Aaron W Moore · IPR · Final written decision

  Claims 2–8 and 11 were not shown unpatentable: Ground 1 failed under the adopted carrier-aggregation construction, and Ground 2 lacked a sufficient motivation to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute Petitioner’s contention that a person of ordinary skill in the art ‘at the time of the alleged invention would have had at least an M.S. degree in electrical engineering (or equivalent experience) and would have had at least two years of experience with the structure and operation of RF transceivers and related structures (or the equivalent).’” PO Resp. 11 (quoting Pet. 34). We adopt Petitioner’s characterization of the level of ordinary skill in the art, which we find to be generally consistent with the disclosure of the ’356 patent.” slip op. at 12

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

    “We are not persuaded by Petitioner’s analysis because the claim recites both “aggregation” and “transmissions sent on multiple carriers,” indicating that “aggregation” must mean something more than the presence of multiple carriers. We thus do not agree that “aggregation” simply means that multiple carriers are present in the input RF signal. We conclude that the language of the claim itself is more supportive of Patent Owner’s proposed construction, which gives meaning to the term “aggregation” beyond the concept of multiple carriers, which is already in the claim.” slip op. at 14

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “construction is “consistent” with a person of ordinary skill in the art’s understanding of the term. Id. at 31; see Ex. 1202 ¶ 62. Dr. Fay, however, cites no evidence other than the specification to support the idea that “carrier aggregation” is simply simultaneous operation on multiple carriers. Nor, we find, does he persuasively explain how his proposed construction accounts for “aggregation.” The mere presence of multiple carriers in the input signal cannot be “aggregation” of the carriers because the claim already recites “multiple carriers” in the input signal. Aggregation must mean something more than multiple carriers existing at the same time.4 Patent Owner cites Dr. Foty for support of its proposed construction, and Dr. Foty provides citations to various pieces of supporting extrinsic evidence. See PO Resp. 18–23; Ex. 2024 ¶¶ 94–110 (citing Ex. 1204, 10; Ex. 2013, 3:19–22 (“One technique for providing additional bandwidth . . . is through the use [of] carrier aggregation of multiple smaller bandwidths to form a virtual wideband channel at a wireless device.”); Ex. 2018, 3:27–62 (describing “carrier aggregation of multiple smaller bandwidths to form a 4 We agree with Petitioner that its proposed construction is not “inconsistent” with the meaning that this term had in the art, but find that Patent Owner’s proposed construction is both “consistent” with and better captures what the term would have meant to one of skill in the art at the time of the application.” slip op. at 22

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

    “independent claim 1 and, therefore, include its limitations, including, among other things, that “the input RF signal employ[s] carrier aggregation comprising transmissions sent on multiple carriers at different frequencies to a wireless device.” Petitioner’s Ground 1 is based on its construction of “carrier aggregation” as meaning “simultaneous operation on multiple carriers.” See, e.g., Pet. 51–52 (arguing that “Jeon teaches ‘a dual-band signal containing two different frequencies concurrently,” which teaches carrier aggregation). Because, for the reasons detailed above (see Section II.B), we find “carrier aggregation” to additionally require that the carriers “are combined as a single virtual channel to provide higher bandwidth,” we find that Petitioner has not shown claim 1 to be unpatentable and, thus, has not shown that dependent claims 2–8 and 11 are unpatentable in view of Jeon and Xiong.7” slip op. at 26

  Patent outcomesUS 9,154,356 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,154,356
• Apple Inc. v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jan 22, 2020 · IPR2018-01252 · APJ Scott B Howard · IPR · Final written decision

  Apple did not prove claims 1–6 and 8–20 unpatentable as obvious over Jin and Elias because it failed to show Jin teaches moving a card with directional contact.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “art include (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 7

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

    “[W]e need only construe those claim limitations ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Because the parties did not request the construction of any limitation and no express constructions are necessary to resolve a controversy, we do not construe any of the limitations. slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “prima facie case of unpatentability.” Trial Practice Guide Update (August 2018), 14, available at https://www.uspto.gov/sites/default/files/documents/ 2018_Revised_Trial_Practice_Guide.pdf. As the Federal Circuit has explained, [i]t 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.” 35 U.S.C. § 312(a)(3). “All arguments for the relief requested in a motion must be made in the motion. A reply may only respond to arguments raised in the corresponding opposition or patent owner response.” 37 C.F.R. § 42.23(b). Once the Board identifies new issues presented for the first time in reply, neither this court nor the Board must parse the reply brief to determine which, if any, parts of that brief are responsive and which are improper. As the Board noted, “it will not attempt to sort proper from improper portions of the reply.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012). Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016); see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (quoting same). Based on that standard, the Federal Circuit determined that the PTAB properly refused to consider a new theory raised for the first time in a reply brief:” slip op. at 23

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

    “preliminary,” “based on the evidentiary record developed thus far,” and that “[o]ur final decision will be based on the record as fully developed during trial.” Id. at 32. We further advised the parties that we were not “determin[ing] whether an individual asserted fact is indisputable or whether a preponderance of the evidence supports Petitioner.” Id. at 31. Having conducted the trial, for the reasons discussed below, our preliminary finding is not supported by the entirety of the record. Instead, we agree with Patent Owner that Jin does not teach or suggest “directional contact of moving the [selected] card along . . . the touch-sensitive display screen” and agree that the combination of Jin and Elias does not teach or suggest “dismissing the selected first card or second card from the touch-sensitive display screen in the second direction so that the corresponding first application or second application is closed” as recited in claim 1. Specifically, Petitioner has not sufficiently shown that Jin teaches or suggests that the processor responds to directional contact moving the selected card in the second direction on the display screen. Jin’s Figures 9C shows a finger moving along the screen—directional contact. Ex. 1005, Fig. 9C. However, Jin’s Figure 9C does not illustrate the card moving along with the finger. Id. Rather, Jin’s Figure 9E simply shows the cards in a new position without describing what happened on the display while the location of the cards were changed. See id. at Fig. 9E. Accordingly, Petitioner has not proven that Jin teaches directional contact moving the selected card in the second direction on the display screen.” slip op. at 29

  Patent outcomesUS 8,683,362 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,683,362
• Apple Inc. v. Qualcomm IncorporatedNo claims unpatentable
  PTAB · Jan 2, 2020 · IPR2018-01279 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–14 and 16–18 were not shown unpatentable because the asserted combinations did not teach composing a message after the incoming call; the contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s formulation. Inst. Dec. 17. Patent Owner does not challenge Petitioner’s formulation. See PO Resp. 12–13; Ex. 2004 ¶ 57 (Jeffay Decl.) (“[F]or the purposes of this declaration, I have applied Petitioner’s proposed level of skill.”). Accordingly, we adopt Petitioner’s proposed level of ordinary skill, except that we delete the qualifier “or more” to eliminate vagueness as to the amount of practical experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the the art would have had either (1) a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, computer science, or an equivalent field (or a similar technical Master’s Degree, or higher degree) with a concentration in wireless communication and networking systems or (2) a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science and having two years of experience in wireless communication and networking systems. Moreover, additional education in a relevant field, such as computer engineering, or electrical engineering, or industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7

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

    “recited in claim 1 means generating a message and does not encompass using pre-composed messages. That construction is consistent with the language recited in the claims, the ’037 patent, and the use of “composing” in a related patent. We begin with the words of claim 1. Claim 1 recites “in response to receiving an incoming call, prompting a user of the first computing device to incoming call by composing, while not answering the incoming call, a message to a user of the second computing device.” Ex. 1001, 10:7–11. Based on the ordinary meaning of the claim language, the claim requires prompting a user to enter user input and that the entered user input “instructs the first computing device to handle the incoming call by composing . . . a message.” See id. That is, it is the user input—which itself is in response to an incoming call—which causes the composing to take place. Thus, the language of the claim requires that the composing takes place after the incoming call is received and the user input is entered. Therefore, the language of the claim precludes using content composed prior to the call and user input, i.e., a precomposed message. See Ex. 2004 ¶ 73 (Jeffay Decl.). This construction is also consistent with the written description of the ’037 patent. The ’037 patent describes two different ways of generating messages. First, the ’037 patent describes how a device may be configured to respond to all incoming calls with a precomposed message, such as “on vacation.” Ex. 1001, 5:18–23. However, claim 1 was amended during prosecution to exclude automatically responding with a precomposed message, thus excluding that embodiment from the scope of claim 1. See Ex. 1002, 157 (amendment to claim 1), 165–68 (prosecution history of the ’037 patent) (distinguishing prior art references which automatically responded with a precomposed message); see also Ex. 2004 ¶ 70 (Jeffay Decl.) (“Accordingly, the Applicant amended the claims to distinguish over Brown and clearly disclaimed claim scope corresponding to the embodiments in which an incoming call is automatically responded to with a message.” (citing Ex. 1002, 166–68)). response to a trigger—user input—from the user. See Ex. 1001, 5:24–54, 7:52–8:2, Fig. 4 (step 470 (“address message body”) is after steps 410 (“receive incoming call”) and 435 (“message response?”)). Because the message is generated in response to the user input, it does not exist prior to user input being entered. That is, a precomposed message is not being used.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Our rules require the Petition to include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing law, rules, and precedent.” 37 C.F.R. § 42.22(a)(2) (2017). Additionally, the Petition “must identify . . . [h]ow the construed claim is unpatentable under must specify where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4) (2017). Our rules further provide for a petitioner to file a reply to respond to arguments made in the patent owner’s response. See 37 C.F.R. § 42.23(b) (2019). Petitioner choose neither option to set forth its arguments regarding Mäkelä’s claim 28. We decline Petitioner’s invitation to consider arguments presented in papers outside of the Petition and Petitioner’s Reply. We treat Petitioner’s request that we consider arguments only presented in the Opposition to the Motion to Amend as a request for incorporation by reference. However, our rules prohibit “incorporat[ion] by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3) (2019); see also DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (Incorporation “by reference amounts to a self-help increase in the length of the [ ] brief[,]” and “is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”)). Petitioner has not persuasively argued why we should not apply Rule 42.6(a)(3) in these circumstances. See 37 C.F.R. § 42.5(b) (2019) (“The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”). Although Petitioner may have intended to make the argument in both Petitioner’s Reply and the Opposition to the Motion to Amend (Tr. 58–59), it did not do so.8” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “With regard to the merits, we agree with Patent Owner that Petitioner has not sufficiently shown how Mäkelä teaches “composing . . . a message” as recited in claim 1. Neither the Petition nor Petitioner’s Reply specifically addresses when the reply message is prepared. See Pet. 16–17; Pet. Reply 14. Moreover, Dr. Mandayam—Petitioner’s expert witness— conceded that the messages in Mäkelä are composed and stored prior to the incoming call being received: Q. So I think just to repeat the question, is there any disclosure in Mäkelä that the message sent by the user in response to an incoming call is anything other than a message previously stored by the user before the incoming call? Yes or no, please. . . . that have been composed ahead -- previously by the user with the ability to choose them. . . . . Q. The modes of response listed in Claim 27, that is a voice message, an e-mail message, a facsimile, and an SMS message in the form of a character string are all limited to precomposed messages. Do you agree with that? . . . THE WITNESS: So the messages have been composed by the user and stored, as we have gone through this already a few times. So that is stored and composed and resides in the device. And the user is making the choice in response to a call to send whichever their preferred option is. And there is some dynamism if you read through the specifications where there are responses you can fine-tune based on the amount of time you want to be not disturbed or the amount of time your meeting is in session. So there are things like that. But this is the characterization, and I think this is something I agree. . . . Q. So I think we agree that the user selects a message that is to be transmitted in response to an incoming call. The question is would you agree that in Mäkelä the user’s selection of the message in response to an incoming call is limited to precomposed messages? . . .” slip op. at 19

  Patent outcomesUS 7,844,037 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,844,037

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.