• Google LLC v. Withrow Networks Inc.Instituted
  PTAB · Sep 29, 2025 · IPR2025-00775 · APJ Jason J Chung · IPR · Institution

  The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable, including over Carmel and Mattavelli.

  RulingsInstitution decision

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

    “1. Principles of Law A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of obviousness or non-obviousness (i.e., secondary considerations, such as commercial success, long-felt but unsolved need, failure of others, etc.).5 Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966). We analyze the asserted grounds based on obviousness with the principles we identify above in mind.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the 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 active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (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. at 696–97. Relying on the testimony of Dr. Polish, Google argues the following: [a] person of ordinary skill in the art . . . would have possessed at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet. Additional education could compensate for less practical experience and vice versa.” slip op. at 10

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

    “In the Petition, Google states that it “does not presently contend that any [claim] term requires express construction.” Pet. 6. In response, Withrow acquiesces; in particular, Withrow argues “the Board need not construe any terms of the ’849 Patent. Petitioner does not contend any [claim] terms require express construction.” Prelim. Resp. 13 (citing Pet. 6). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See, e.g., 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 8

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

    “Turning to rationale to combine, Google contends that Carmel and Mattavelli are both directed to processing multimedia data playback “for the appreciation of a user,” while providing the highest perceived audio and video output quality possible in view of system constraints to ensure playback continuity. Pet. 50–51 (citing Ex. 1003, 10:48–54, 11:9–18, 7:35– 49, Figs. 3D, 6B; Ex. 1004, 2309, 2310). Google argues that both Carmel and Mattavelli pertain to compression of multimedia data using well-known coding and compression standards for video streaming. Pet. 51 (citing Ex. 1003, 7:25–26, 11:24–52; Ex. 1004, 2309–2311). Google argues a PHOSITA would appreciate both Carmel and Mattavelli complement each other because Carmel pertains to addressing constraints to available network bandwidth, whereas Mattavalli relates to addressing limits on available processing resources at the client/multimedia player. Pet. 52 (citing Ex. 1003, Abstract, 7:36–41; Ex. 1004, 2309–2312). Google argues that a PHOSITA would have been motivated to combine the complementary teachings in Carmel and Mattavelli to create a more robust streaming system that addresses both bandwidth constraints and client processing limits to provide a best possible playback experience. Pet. 52 (citing Ex. 1002 ¶¶ 212–215). Google argues that Mattavelli teaches merely optimizing transmission bandwidth is not sufficient and is potentially harmful, which provides an express motivation to combine Carmel’s and Mattavelli’s complementary teachings to ensure that different, related links in the streaming playback chain are optimized together. Pet. 53 (citing Ex. 1002 ¶¶ 216–217; Ex. 1004, 2310). In addition, Google argues Carmel contains an express disclosure that would have motivated a PHOSITA to combine Carmel with Mattavelli’s complementary teachings because Carmel states that multimedia playback is achieved “preferably with only a minimal necessary transmission and decoding delay.” Pet. 53–54 (citing Ex. 1002 ¶ 218; Ex. 1003, 10:50–54). Withrow does not specifically respond to these arguments, except for limitations 1[c.ii] and 1[c.iv] discussed infra. See generally Prelim. Resp. Nonetheless, the burden of persuasion remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Based on the preliminary record, we discern no deficiency in Google’s characterizations of Carmel, Mattavelli, or the general background knowledge in the art. In addition, for purposes of institution, we are persuaded by Dr. Polish’s testimony concerning the relevant disclosures in Carmel and Mattavelli.” slip op. at 22

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,771,849
• Microsoft Corporation v. Partec AGInstituted
  PTAB · Jul 8, 2025 · IPR2025-00318 · APJ Jameson Lee · IPR · Institution

  The Board instituted IPR on claims 1–10, finding a reasonable likelihood that Lippert and Budenske render the challenged claims obvious.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states that for purposes of the Preliminary Response it has applied Petitioner’s recitation of the level of skill in the art. Prelim. Resp. 15. Patent Owner has not proposed its own articulation of the level of ordinary skill. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Long and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7

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

    “Regarding motivation to combine, Petitioner explains: A POSITA would have been motivated to implement the heterogeneous computing system of Lippert with the dynamic iterative sub-tasks assignment method of Budenske partly because doing so would facilitate efficient distributions of subtasks and processing resources during execution of an iterative application, thus fully leveraging the flexibility of the heterogeneous architecture and “reduc[ing] execution time” of computing iterations. EX1005, 391; EX1003, ¶59. Pet. 17. Petitioner further explains: Second, Budenske provides express motivation from implementing its method in a heterogeneous computing system such as Lippert, namely to “fully utilize the architectural flexibility of such a [heterogeneous parallel computing] system.” EX1005, 390. A POSITA would have found that the dynamic flexibility of the heterogeneous computing system taught by Lippert through the “loose coupling” of computation nodes and boosters (EX1004, [0013], [0015] (describing “a maximum flexibility in providing hardware resources”)), naturally complements the dynamic flexibility of remapping sub-tasks among processing resources to account for the actual processing of the sub-tasks by the processing resources during preceding iterations, as taught by Budenske (EX1005, 391), and that the combination for these teachings would provide increased flexibility for optimally processing iterative applications. EX1003, ¶60.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “teaching away” argument: “As discussed above, Budenske actually teaches away from distributing subtasks between processor types, noting that for its teachings to work all processors utilized for a given task must be of the same type. EX1005 at 392; Section VI.A.1.” Prelim. Resp. 23. We already discussed and rejected above Patent Owner’s contention that Budenske describes its teachings would work only if all processors utilized for a given task are of the same type. Thus, the “teaching away” argument also lacks merit. Alternatively, Patent Owner asserts that even if we reject Patent Owner’s “teaching away” argument, “Budenske’s teachings would have strongly weighed against motivating a skilled artisan to develop a system according to the ‘442 Patent claims.” Prelim. Resp. 23–24. We disagree. As discussed above, Budenske acknowledged that its resource mapping method would be more easily accomplished if all the processors were of the same type. It nowhere indicates, as Patent Owner argues, that the method would work only if all the processors were of the same type. slip op. at 24

  § 103 obviousness
  Patents in suitUS 11,537,442
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Apr 6, 2020 · IPR2019-00030 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–5 are unpatentable as obvious over Ogino and Beich; claims 1–4 are also unpatentable over Ogino alone, but claim 5 is not shown unpatentable on that ground.

  RulingsFinal written decision

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

    “We construe claim terms to the extent necessary. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “supported by the cited evidence. We are persuaded, instead, that “the image plane and the sensor are taught by the ’568 patent to be coincident,” and “[t]hus, there is no ambiguity in the ’568 patent about where the image plane is located or that TTL is measured to the image plane,” as Petitioner argues in its Reply. Reply 13 (Ex. 1026 ¶ 5; Ex. 1003, 33–35). Patent Owner acknowledges as much, noting that “as these terms[, i.e., the image plane and the sensor,] are used in the specification of the ’568 patent, the image plane is the surface of the sensor.” Sur-reply 2. We find that the ’568 patent discloses that the electronic sensor corresponds to or is coincident with the image plane and thus, the TTL could be measured with respect to either the sensor (electronic or film) or the image plane and reach the same result. Based upon the complete trial record, we maintain our construction of TTL from the ’1140IPR and the ’1146IPR3, which encompasses “the length of the optical axis spacing between the object-side surface of the first lens element and one of: an electronic sensor, film, and an image plane corresponding to either the 3 The panel authorized, and the parties filed, supplemental briefing to address this construction before it was adopted in both the related ’1140IPR and ’1146IPR, and that the parties responded to this construction in the hearing in this proceeding (with citations to the transcript). See, e.g., Paper 28 (PO’s demonstratives), 5; ’1140IPR, Paper 31; ’1146IPR, Paper 30; see also Trial Practice Guide Update 13–14 (July 2019), https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-update3.pdf; Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1339 (Fed. Cir. 2018) (finding that the Board did not violate the Administrative Procedure Act when it adopted its own claim construction in the final decision because the parties had notice and an opportunity to be heard). electronic sensor or a film sensor.” See ’1140IPR, Paper 37, 18; ’1146IPR, Paper 37, 14.” slip op. at 14

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Even assuming, arguendo, we were to credit Patent Owner’s expert testimony as to the disjointed nature of optical lens assembly design experience and manufacturing experience, we are not persuaded that a person of ordinary skill in the art at the time of the invention having only design experience would be so completely unaware of manufacturing considerations so as to preclude taking into account the very general guidance of Beich. See Reply 24–25. Beich teaches that a lens designer should have a basic understanding of the manufacturing process, which would include the limits for fabricating lens elements in an optical lens assembly. Ex. 1020, 7. We are persuaded that the information conveyed in Beich would have been understood, known, and applied by the ordinarily skilled lens designer (see Reply 4–6 (citing Ex. 2014, 4, 9, 11, Fig. 9.2)), irrespective of whether such person had manufacturing experience. Stated differently, although an ordinarily skilled designer of an optical lens assembly may not have had any real-world manufacturing experience, we are persuaded that such person would still have taken into account manufacturing concerns. Although there are differences between the definitions proposed, our conclusions rendered in this decision do not turn on selecting a particular definition for the level of ordinary skill in the art, for the reasons discussed above. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’568 patent and the asserted prior art. We agree with Patent Owner’s proposal regarding the level of ordinary skill except for Patent Owner’s arguments about manufacturing discussed above. As such, we adopt Patent Owner’s proposal.” slip op. at 18

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

    “As noted by Petitioner, The Handbook of Optics discloses that “[i]n the case of both negative and positive lens elements, it is good policy to avoid element forms wherein the center-to-edge thickness ratio exceeds three for positive elements.” Ex. 1019 § 34.15. Thus, we are persuaded by Petitioner’s fourth reason that the cited disclosure provides evidence that the ordinarily skilled artisan would have selected a particular diameter for the first lens element disclosed in Ogino in conformance with manufacturing considerations known to the ordinarily skilled artisan. We are further persuaded that, from the selection of that particular diameter, a Z1 value for the object-side surface and a Z2 value for image-side surface at the minimum usable edge of the first lens element can be obtained and, in turn, circumferential edge thickness L1e can be obtained. Pet. 35–36 (citing Ex. 1003, 42; Ex. 1005, 15:1–3). We are further persuaded by Petitioner’s supporting reasoning that “a POSITA would understand the manufacturing benefits of maintaining the lowest possible center-to-edge thickness ratio since ‘the preferred shape of a molded element is one that has fairly uniform thickness.’” Id. at 42 (quoting Ex. 1018, 92) (citing Ex. 1003, 48). Based on our review of the complete record, we find that the record supports Petitioner’s contentions concerning claim 1. Petitioner demonstrates by a preponderance of the evidence that claim 1 is unpatentable as obvious over Ogino.” slip op. at 37

  Patent outcomesUS 9,857,568 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,857,568
• Apple Inc. v. Corephotonics Ltd.All claims unpatentable
  PTAB · Dec 3, 2019 · IPR2018-01140 · APJ Marc S Hoff · IPR · Final written decision

  Claims 1 and 13 are unpatentable as anticipated by Ogino; claims 14 and 15 are unpatentable as obvious over Ogino and Chen II.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “claims 1 and 13 of the ’032 Patent are anticipated by Ogino. Petitioner has also demonstrated, by a preponderance of the evidence, that claims 14 and 15 of the ’032 Patent are unpatentable over the combination of Ogino and Chen II. The chart below summarizes our conclusion. References Claims Claims Claims 35. Shown Not shown Challenged U.S.C. Unpatent- Unpatentable able Ogino 1 and 13 1 and 13 § 102 Ogino, Chen 14 and 15 14 and 15 § 103 II 1 and 13-15” slip op. at 40

  • Skill levelSkill level board ownDecided for petitioner

    “that Ogino and Chen II disclose substantially different lens systems. PO Resp. 36. As Petitioner points out, both Ogino and Chen II describe mobile phone camera systems with all lenses being aspheric; a first lens with a meniscus shape with positive refractive power; a second lens with negative refractive power; a third lens with a meniscus shape and with a negative refractive power; a fourth lens with a meniscus shape with positive refractive power; and a fifth lens with a meniscus shape and with a negative refractive power. Pet. Reply 22; Pet. 41–44. We agree with Petitioner that such a skilled artisan, possessing an applicable college degree, approximately three years experience in designing multi-lens optical systems, “experience in analyzing, tolerancing, adjusting, and optimizing multilens systems, and experience with lens design software such as CodeV, Oslo, or Zemax,” would have the appropriate knowledge to perform routine modifications to a lens design. Pet. Reply 24; Pet. 7; PO Resp. 12. Patent Owner’s expert Dr. Moore testified that such a skilled artisan “would be able to use the computer program [i.e. CodeV or Zemax] to optimize lens designs.” Pet. Reply 24; Ex. 1025, 29:25–30:9. Dr. Moore testified that the skilled artisan would “tell the [lens design] program that you want to vary certain parameters of a lens . . . . And then the program, through a fairly complicated algorithm, then actually goes through and varies them and determines how to make a better lens. You determine as a lens designer what you’re trying to improve.” Ex. 1025, 28:13–23.” slip op. at 38

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “We are unpersuaded by Patent Owner’s argument that the skilled artisan would have understood that third, fourth, and fifth lenses also contribute to vignetting in Ogino. PO Resp. 38. We credit Petitioner’s argument that Dr. Moore’s conclusion regarding vignetting in the third, fourth, and fifth lenses is unreliable because it is based on assumptions not specified in Ogino. Pet. Reply 16; Ex. 1026 ¶ 11. For example, Ogino does not provide lens diameters or vignetting apertures for the lens assembly of Example 6 that would vignette the light beams on the third, fourth or fifth lens elements. Pet. Reply 17; Ex. 1026 ¶ 11. Additionally, Dr. Sasián testifies that vignetting is a result of the second lens. Pet. Reply 17–18; Pet. 54; Ex. 1003, 59.” slip op. at 36

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “Effective Focal Length (EFL) Petitioner asserts that while the specification of the ’032 Patent does not offer an express definition for the term “effective focal length,” “its meaning is well known in the art, as exemplified in Li (Ex. 1007), which states that “[t]he focal length of a lens assembly [is] also referred to as the effective focal length [(]EFL).” Pet. 9–10 (internal parentheses omitted); Ex. 1007, 2:59–61. Patent Owner, in response, does not dispute Petitioner’s construction of “effective focal length,” stating that the Petition does not turn on the construction of the term. PO Resp. 20. Having reviewed the evidence of record, we agree with Petitioner that Li supports construing the term “effective focal length” as “the focal length of a lens assembly.” We adopt this construction.” slip op. at 10

  Patent outcomesUS 9,402,032 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,402,032
• Apple Inc. v. Corephotonics, Ltd.Rehearing denied
  PTAB · Aug 5, 2019 · IPR2018-01348 · APJ Bryan F Moore · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving in place the denial of institution because the petition did not show a sufficient motivation to combine Parulski and Christie.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “ANALYSIS When considering a request for rehearing, we review the Decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “and Parulski’s teachings of zoom are combinable (id.) and Petitioner has not established that they are predictable variations of each other. Disparate embodiments in one reference can only be combined if they are a “predictable variation” of each other that does not “require a leap of inventiveness.” C.f. Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009); see e.g. Apple Inc. v. Valencell, Inc., Case IPR2017- 01704, slip op. at 10 (PTAB Mar. 27, 2018) (Paper 9) (acknowledging Boston Scientific stands for the proposition that combining two embodiments from the same reference requires an obviousness analysis); LG Display Co., LLC v. Innovative Display Techs LLC, Case IPR2014-01362, slip op. at 13 (PTAB Mar. 2, 2015) (Paper 12) (“The rationale . . . that a person of ordinary skill would ‘pick and choose’ features from various embodiments of Baur, simply because they are in the same patent, is insufficient to demonstrate a reasonable likelihood of prevailing on this challenge”). “Even when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).” slip op. at 4

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

    “fused image.” Reh’g Req. 13. The Petition proposed that “fused image” should be construed as “an output image including information from two images.” We determined that construing that term was unnecessary to resolve any controversy. Inst. Dec. 7. We maintain that determination. Petitioner provides a construction for “fused image” but not for “without fusion continuous Zoom video mode output images of the object or scene.” Id. at 9–10. We properly considered the entire claim limitation in assessing whether Petitioner had shown a reasonable likelihood of prevailing in its obviousness challenge. slip op. at 12

  • BurdenDecided for patent owner

    “The burden of persuasion remains on a petitioner in inter partes review proceedings. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (Fed. Cir. 1999). Petitioner appears to now argue that, in order to understand its contentions as to the “without fusion” limitation in Parulski, we were to mine the Petition for references to “switching between Wide sensor and Tele sensor” associated with Golan. We were not required to do so. Id. (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”); c.f. Fieldpiece Instruments, Inc. v. Twin Rivers Eng’g, Inc., Case IPR2017-00362, slip op. at 4 (PTAB Sept. 25, 2017) (Paper 16)(“the portions of the Petition cited in the Rehearing Request relate only to overviews of the references”)” slip op. at 8

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,185,291
• Apple, Inc. v. Realtime Data LLCRehearing denied
  PTAB · Aug 21, 2018 · IPR2016-01738 · APJ Georgianna W Braden · IPR · Rehearing

  The Board denied Apple's rehearing request, leaving intact its decision that the proposed substitute claims were not shown patentable over the cited art because Settsu did not disclose preloading during the same boot sequence.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2

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

    “First, as explained in the Decision, when construing the claims at issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 6–7.” slip op. at 3

  Claim constructioncites Markman
  Patents in suitUS 8,880,862
• Apple, Inc. v. Realtime Data LLCRehearing denied
  PTAB · Aug 21, 2018 · IPR2016-01737 · APJ Georgianna W Braden · IPR · Rehearing

  The Board denied Apple’s rehearing request, leaving intact its finding that the prior art did not disclose the substitute claims’ preloading limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id.” slip op. at 2

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

    “First, as explained in the Decision, when construing the claims at issue (1) we looked at the language of the claims themselves, (2) we consulted the patent’s specification to help clarify the meaning of claim terms, because the claims “must be read in view of the specification, of which they are a part,” Trading Techs. Int’l, v. eSpeed, Inc., 595 F.3d 1340, 1352 (Fed. Cir. 2010) (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (en banc), aff’d, 517 U.S. 370 (1996)), and (3) we reviewed “the patent’s prosecution history in proceedings in which the patent has been brought back to the [US Patent and Trademark Office] for a second review” (Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)). See Decision, 6–7.” slip op. at 3

  Claim constructioncites Markman
  Patents in suitUS 8,880,862
• Bungie, Inc. v. Acceleration Bay, LLCRehearing denied
  PTAB · Jun 29, 2018 · IPR2017-01600 · APJ Marc S Hoff · IPR · Rehearing

  The Board denied Bungie’s rehearing request and maintained denial of institution because Francis and Gilbert did not show a reasonable likelihood of obviousness for claims 1–5, 7, 8, and 11–13.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “A. Principles of Law When rehearing a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party requesting rehearing has the burden of showing the decision should be modified, which includes specifically identifying all matters the party believes we misapprehended or overlooked. See 37 C.F.R. § 42.71(d).” slip op. at 2

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

    “B. Discussion In our Decision, we concluded that the information presented did not show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7, 8, and 11–13 are rendered obvious by Francis1 and Gilbert.2 Dec. 13. Specifically, we determined that the combination of Francis and Gilbert, taken together, did not disclose “identifying a pair of participants of the network that are connected wherein [1] a seeking participant contacts a fully connected portal computer, [2] which in turn sends an edge connection request to [3] a number of randomly selected neighboring participants to which the seeking participant is to connect.” Dec. 9–12.” slip op. at 3

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

    “overlooked any points made in the Petition. In our Decision, we explicitly referred to pages 53–55 of the Petition in discussing Francis’s teaching of “rendezvous hosts,” and Petitioner’s argument that modifying Francis’s rendezvous host with the features of Gilbert’s portal computer would provide some messaging efficiencies. Dec. 11. We concluded that Petitioner “fails to explain sufficiently why it would have been obvious to combine Francis and Gilbert to have a seeking participant contact a fully connected portal computer as claimed.” Id. at 11–12.” slip op. at 6

  § 103 obviousness
  Patents in suitUS 6,910,069
• K/S Himpp v. III Holdings 4, LLCNo claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00496 · APJ James T Moore · IPR · Final written decision

  Claims 1–17 were not shown unpatentable under § 103 over Topholm and Michael because the cited art did not teach adjusting a hearing aid profile.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The problem we find with this position is that the Petitioner is reading claim elements into the description of these references. Patent Owner points out that the profiles are not being adjusted, but rather being selected from twenty-four previously stored profiles. Resp. 30–31. While the ear module operational profile changes, we observe that this is because it is using a different profile, which was just uploaded from the control unit. The act of moving the finger around on the screen to us perhaps appears to change the profile, when it is in fact moving through a set of preexisting profiles and uploading them to the hearing aid instead, changing operation of the hearing aid itself but not adjusting the profile itself. Michael states: This permits the user to select a hearing profile by simply moving visual indicator 924 over main region 922 while listening to a sound stream broadcast by ear 35 module 10; the sound stream being heard by the user reflects the hearing profile corresponding to the current position of the visual indicator 924 in real-time. Ex. 1005, 8:32–37.” slip op. at 21

  • Expert testimonyPetitioner expert creditedOther

    “4 Petitioner also relies upon the declaration testimony of Dr. Robert E. Morley, Jr. (Ex. 1002). Both references appear to be prior art under 35 U.S.C. § 102(b). We find Dr. Morley, by virtue of his education and experience, qualified to testify to the subject matter of this proceeding. Ex. 1002 ¶¶ 2–14 and Exhibit A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. PO Resp. 34–36. We give Dr. Morley’s testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2006. We decline to assign generally no weight to his testimony, however.” slip op. at 3

  • Skill levelSkill level petitioner adoptedOther

    “These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,”5 (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long felt but unsolved needs, failure of others, etc.”6 KSR, 550 U.S. at 406 (quoting Graham, 383 U.S. at 17–18). 5 Petitioner defines the level of ordinary skill in the art as someone with a B.S. degree in electrical or computer engineering, or the equivalent, and at least two years of experience in the design of audiological products. Pet. 7-8 (citing Ex. 1002, ¶ 32). Patent Owner does not challenge this level. PO Resp., passim. The references in the record tend to support a finding that this is the appropriate level.” slip op. at 12

  Patent outcomesUS 8,761,421 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,761,421
• K/S Himpp v. III Holdings 4, LLCOther
  PTAB · Jun 28, 2018 · IPR2017-00414 · APJ James T Moore · IPR · Final written decision

  Claims 1–7 were not shown unpatentable under § 103 over either Cohen and Martin or Holmes and Martin because the combinations did not establish the claimed separate shaping before mixing.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “As used herein, the term “hearing aid profile” refers to a collection of acoustic configuration settings for hearing aid 102, which are used by a processor 110 to shape electrical signals related to sounds to compensate for the user's hearing loss. Ex. 1001, 3:11–15. Petitioner states that Patent Owner defined this term in the ’538 patent as “a collection of acoustic configuration settings for hearing aid 102, which are used by processor 110 to shape electrical signals related to sounds to compensate for the user’s hearing loss.” Pet. 15. According to Petitioner, this construction is consistent with the plain and ordinary meaning of the term, relying upon the testimony of its witness Dr. Les Atlas. Pet. 15 (citing Ex. 1003 ¶ 38).10 Patent Owner does not dispute Petitioner’s proposed construction. Resp. 10–11. 10 Dr. Les Atlas is the Petitioner’s witness in this matter. We find him qualified to testify as to the subject matter of this proceeding, by virtue of his education and experience. See Ex. 1003 ¶ 4, and Appendix A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. Resp. 31–34. We give Dr. Atlas’ testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2005. We decline to assign generally no weight to his testimony, however. supports, and is consistent with, Petitioner’s proposal. Ex. 1001, 3:12–16. Accordingly, we determine that the broadest reasonable construction, in light of the specification of the ’538 patent, of the term “hearing aid profile” is a “collection of acoustic configuration settings for hearing aid, which are used by a processor to shape electrical signals related to sounds to compensate for a user’s hearing loss.”” slip op. at 8

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

    “For the purposes of our decision, we determine that no other claim terms need explicit construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (citation omitted).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “11 Petitioner defines the level of ordinary skill in the art as someone with a Bachelor’s degree in electrical engineering and at least two years of experience in the field of audio engineering. Pet. 14 (citing Ex. 1003 ¶ 25). Patent Owner does not challenge Petitioner’s definition. Resp. passim. The references in the record support a finding that this is the appropriate level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of skill in the art). 12 The record contains no allegations or evidence of secondary considerations.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We find the testimony of Dr. Atlas on the key point of obviousness of pre-mixing processing to be less persuasive than that of Mr. Brown. We also find Dr. Atlas’ testimony falls short of adequately explaining how the combination of Cohen and Martin teaches a nexus (i.e., the “based on both the first [shaped] output signal and the second [shaped] output signal” (emphasis added) (hereinafter, “based on both limitation”) limitation recited in claim 1) between the claim 1 requirements of: (1) a condition precedent of shaping both a first output signal and a second output signal; and (2) a subsequent result of using both the first shaped output signal and the second shaped output signal if the hearing aid is in a third mode. Dr. Atlas assumes that one of ordinary skill in the art would process separately each signal and then mix them. Ex. 1003 ¶ 66. We find Dr. Atlas’ assumption is flawed. Specifically, in making this assumption, Dr. Atlas does not address adequately how the combination of Cohen and Martin opines “it would have been obvious to a person of ordinary skill in the art” (emphasis added), his later sentences appears to base his opinion principally on the reason one of ordinary skill in the art could do it. Id. In particular, he testifies: Because Cohen’s hearing aid applies different hearing aid profiles to different input sources, it would have been obvious to a person of ordinary skill in the relevant art to add the functionality of the combination mode as taught by Martin to Cohen’s hearing aid such that the speaker would produce an audible sound based on the output signals of the processor. Combining two signals such that both signals are sent to a speaker to an audible combination of sounds, that is where each signal is sufficiently perceived, was well within the technical ability of a person of ordinary skill in the art. To accomplish this would require that each one of the two signals is passed through an appropriate hearing aid profile. For example, it would have been obvious to a person of ordinary skill in the art that a different hearing aid profiles could be used for an audio coil inputs and that of a neighboring conversation and environmental sounds through a microphone. Namely, it is commonly known that the different frequency sensitivity of an audio telecoil versus a microphone can be beneficially compensated for. (Rodriquez, Ex. 1011, Abstract)” slip op. at 24

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,649,538

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.