• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentable
  PTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and the prior art. 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). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13

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

    “Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27

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

    “evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62

  Patent outcomesUS 11,336,832 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,336,832
• Apple Inc. v. RJ Technology, LLCInstituted
  PTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution

  The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.

  RulingsInstitution decision

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

    “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) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7

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

    “Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 7,749,641
• Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentable
  PTAB · Mar 24, 2023 · IPR2021-01294 · APJ Sheila F Mcshane · IPR · Final written decision

  The Board held all challenged claims 1–25 unpatentable under the asserted obviousness grounds and denied Patent Owner’s contingent motions to amend.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Ordinary Skill in the Art Snap proposes that a person of ordinary skill in the art at the time of the ’599 patent would have possessed “an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of content presentation and context-based systems/processes.” Snap Pet. 3 (citing Snap IPR, Ex. 1002 ¶¶ 30–32); Snap IPR, Ex. 1022 ¶ 32. Snap further asserts that additional “education can supplement practical experience and vice versa.” Id. In the Decision on Institution, we determined that Snap’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’599 patent. Snap Inst. Dec. 6–7. For this proceeding, Patent Owner and Dr. Martin apply this level of skill in the art. Snap PO Resp. 11–12; Snap IPR, Ex. 2003 ¶¶ 48–50. Accordingly, for the reasons given in the Decision on Institution, we adopt Snap’s proposed level of ordinary skill in the art. Snap Inst. Dec. 6–7.” slip op. at 11

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

    “Dr. Martin also provides consistent testimony on this issue. Snap IPR, Ex. 2003 ¶¶ 81–82. Put simply, the Specification’s disclosure is that the set of rules for multiple content packages includes an expected response, and actions are then performed based on whether an expected response is or is not provided. Moreover, as Dr. Almeroth testifies, neither the claims nor the Specification use the term “unexpected response”—rather the Specification only identifies an “expected response.” Snap IPR, Ex. 1022 ¶ 42. Accordingly, the disclosures in Table 1 and the Specification support Dr. Almeroth’s testimony that a person of ordinary skill would have understood that “the claimed ‘determin[e/ing]’ limitation requires what it plainly recites: ‘determin[e/ing] whether the received response matches the expected response[]’. . . . [i]t does not require an unexpected response not known to the system.” Snap IPR, Ex. 1022 ¶ 51.” slip op. at 18

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

    “time,’ ‘type of location,’ and other contextual information to automatically determine whether users would like to undertake learning activities.” Twitter Pet. Reply 18 (citing Twitter IPR, Ex. 1005, 2 3, 5 (“A check . . . to see if the information from the database corresponds with the location sensor (i.e. a check on whether the learner is really keeping his/her schedule).”), Fig.1; Twitter IPR, Ex. 1025 ¶ 49; Twitter IPR, Ex. 1003 ¶¶ 85, 157–162, 238, 435, 451, 517; Twitter Pet. 20–21). Accordingly, the evidence of record support that Yau teaches that context triggers the display of a content piece, such as an exercise/test/quiz. Patent Owner also argues that Twitter asserts that PALLES’ content piece is “‘exercise[s],’ ‘test[s],’ and/or ‘MP Quiz[zes],’” but also contends that Yau’s “formal assessment” is the claimed content piece. Twitter PO Resp. 32. Patent Owner argues that “Twitter points back to its limitation 12.1 PALLAS evidence for the purported ‘content piece’” and also does not mention Yau for limitation 12.5 and 12.6 and “only conclusorily states that ‘PALLAS in view of Yau renders obvious triggering an exercise/test/quiz.’” Id. Patent Owner’s arguments overlook Twitter’s assertion, with Dr. Turnbull’s supporting testimony, that a person of ordinary skill in the art would have understood that Yau’s formal assessments are “tests with answers for comparing against learner’s responses to assess knowledge/performance/skill (contrasting with ‘un-assessed’ exercises whose responses are unchecked).” Twitter Pet. 43; Twitter IPR, Ex. 1003 ¶ 154. Further, Patent Owner overlooks Petitioner’s assertion that it is implementing PALLAS’s context-triggerbased content display using Yau’s teachings of displaying assessments/questions based on context. Twitter Pet. 43. Patent Owner also asserts that in the PALLAS-Yau combination, Twitter does not explain how a person of ordinary skill in the art would have combined the prior art in the manner Petitioner alleges. Twitter PO Resp. 42. Patent Owner argues that “PALLAS says nothing about forcing quizzes, tests, or exercises on its users without the users asking for such exercises,” and a person of skill would understand that the combined system still requires that a student select a learning activity and that PALLAS’s system should be unobtrusive because learners “may have small time slots to engage in learning.” Id. (citing Twitter IPR, Ex. 2013 ¶ 168; Twitter IPR, Ex. 1004, 54). Patent Owner further contends that “Twitter’s conclusory, hindsight-driven statements” do not suffice and PALLAS teaches away from the modifications suggested by Twitter. Id. at 42–43 (citing Twitter IPR, Ex. 2013 ¶ 144). Patent Owner argues that because a learner may not have time to complete a test, a person of ordinary skill in the art would not be motivated to change PALLAS to trigger exercises/tests/quizzes based on location or time. Id. at 43 (citing Twitter IPR, Ex. 2013 ¶¶ 142–144). The evidence of record does not support Patent Owner’s arguments.” slip op. at 115

  • ScopeMotion to amend, grantedGranted

    “2. Enlarging Scope of Claims Patent Owner asserts that it proposes narrowing limitations in direct response to the grounds of unpatentability involved in this proceeding. See, e.g., Snap Mot. 3–4. Facebook argues Patent Owner is “improperly attempting to enlarge the scope of the original claims.” Facebook Pet. Opp. 1. Facebook asserts, “[i]f ‘an expected response’ means one or more expected responses, therefore, determining whether the received response ‘matches the expected response’ means that the received response must match [all of] the one or more previously-recited expected responses in the content package.” Id. at 3 (emphasis omitted). Facebook then argues “the term ‘predefined response’ is broader than ‘expected response,’” because “an ‘expected response’ does not include any conceivable or possible response; it is a response that is expected.” Id. at 4–5 (emphasis omitted). Twitter argues that “‘predefined response’ is broader than ‘expected response’ because a ‘predefined response’ can include any possible response as long as that response has been somehow defined in advance.” Twitter Pet. Opp. 2. We consider the amendments in view of the claim as a whole. Although the term “one predefined response” may be broader than “an expected response,” we also consider the amended portion “wherein the received response is expected if the received response matches one or more of the at least one predefined response,” and “the received response is unexpected if the received response does not match any of the at least one predefined response.” Unless the response had been predefined within the content package, any “received response” could not be considered “expected” under the claims, and the additional clause requires a match of the response with the predefined response to be deemed “expected.” This equates to an equivalent scope to the original claim. This is consistent with Dr. Martin’s testimony, which we credit, that he is not aware of a situation where the substitute but not original claims are infringed because “[t]he substitute claims would only be satisfied when a ‘predefined response’ in the substitute claims is an ‘expected response’ in the original claims.” Facebook IPR, Ex. 2023 ¶ 59.” slip op. at 136

  Patent outcomesUS 8,489,599 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · Graham
  Patents in suitUS 8,489,599
• Corning Optical Communications LLC v. Dali Wireless, Inc.No claims unpatentable
  PTAB · Oct 11, 2022 · IPR2021-00762 · APJ Sharon Fenick · IPR · Final written decision

  The Board held claims 1–12 not unpatentable because Petitioner did not show that FlexWave Prism Manual was publicly accessible before the critical date.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “Our determination regards obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote arts, or to geniuses in the art at hand.” Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 697 (Fed. Cir. 1983)). We therefore remove the open-ended term “a minimum of” from Petitioner’s proposal, and adopt for this decision the following definition: “a person of ordinary skill in the art at the time of the claimed invention would have had: (1) a bachelor’s degree in electrical engineering; and (2) 3–4 years of industry experience in wireless communications networks and engineering. However, an individual with an advanced degree in electrical engineering would require less industry experience (e.g., 1–2 years).” This level of skill comports with the teachings of the ’508 patent and the asserted prior art.” slip op. at 7

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

    “Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp., 868 F.3d at 1017 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). No claim terms require construction to resolve the controversy before us. See Nidec, 868 F.3d at 1017.” slip op. at 8

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

    “c) Conclusion After considering this record evidence, Petitioner has not shown that one of ordinary skill would have performed the searches Mr. Stravitz performed on the EAS database. Mr. Stravitz’s searches appear to have been performed at the direction of counsel to discover whether and how FlexWave Prism Manual could be retrieved from the EAS database by someone who knew about FlexWave Prism Manual, without consideration of whether one of ordinary skill would have performed the searches absent a search directed towards FlexWave Prism Manual or would have known about the EAS database. Thus, Petitioner has not shown that one interested in and ordinarily skilled in the art relating to the ’508 patent would have found FlexWave Prism Manual using the EAS database.” slip op. at 25

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

    “For these reasons, our determination is that FlexWave Prism Manual has not been shown to be publicly available. E. Conclusion For the reasons given above, Petitioner has not met its burden to show that FlexWave Prism Manual was disseminated or otherwise made available to the extent that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. All instituted grounds of unpatentability rely on FlexWave Prism Manual. Pet. 23–77; see Dec. on Inst. 17–29. Therefore, Petitioner fails to demonstrate by a preponderance of the evidence that any of the challenged claims are unpatentable based on the instituted grounds.” slip op. at 27

  Patent outcomesUS 9,826,508 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,826,508
• Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Jun 10, 2022 · IPR2021-01230 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable under §103 based on How-767 and Feild; the Board did not reach the other listed grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “review. Paper 6 (“Institution Decision,” “Dec.”). Following institution, STMicroelectronics filed a petition for inter partes review and a Motion for Joinder in IPR2021-01230, requesting that STMicroelectronics be joined as a petitioner in IPR2021-00130. STMicroelectronics, Inc. v. Monterey Research, LLC, IPR2021-01230, Papers 1, 3. We instituted trial in IPR2021-01230, granted the Motion for Joinder, and added STMicroelectronics as a petitioner to IPR2021-00130. Id., Paper 7. A copy of that decision was entered in the record of IPR2021-00130. Paper 15.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11

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

    “claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See 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 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not responsive to Patent Owner’s argument that a person of ordinary skill in the art would not have been motivated to integrate a standalone flash memory within an ASIC. See PO Resp. 75 (citing Ex. 2002, 53:25–54:3). Instead, Petitioner’s Reply arguments appear to proceed in a new direction with a new approach as compared to the positions advanced in the Petition. Accordingly, Petitioner’s new and non-responsive Reply arguments exceed the proper scope of a reply and have not been considered in rendering this Final Written Decision. See CTPG 73–74.” slip op. at 83

  Patent outcomesUS 6,459,625 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,459,625
• Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Jun 10, 2022 · IPR2021-00130 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable under § 103 based on the grounds shown in the decision’s conclusion table.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 STMicroelectronics, Inc. was joined as a petitioner in this proceeding based on a petition and motion for joinder filed in IPR2021-01230, which were granted. These proceedings were terminated as to petitioner Qualcomm Incorporated. See Paper 37.” slip op. at 1

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11

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

    “claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See 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 19

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

    “does not explain how any of the supposed advantages of Feild are relevant to How-767 or how the combination would achieve these supposed advantages. Petitioner identifies reducing fabrication steps, eliminating polishing steps, and high electromigration performance as benefits of Feild’s fabrication method. See Pet. 63 (citing Ex. 1011, 2:48–3:10; Ex. 1006 ¶ 149). Dr. Lall’s cited testimony identifies these advantages compared to the prior art techniques discussed in Feild that use additional polishing steps, multiple-step processing, and the use of chemical mechanical polishing. See Ex. 1006 ¶ 149 (citing Ex. 1011, 2:16–32, 2:20–30, 2:48–3:10). Petitioner also asserts that How-767 presents Figure 1 as an exemplary cross-sectional view of a generic integrated circuit and never suggests that the precise structure of Figure 1 is required. See Pet. 65 (citing Ex. 1003, 1:21–22). On this basis Petitioner contends that a person of ordinary skill in the art would have understood that other cross-sectional interconnection arrangements could be used. See id. (citing Ex. 1006 ¶ 152). Petitioner asserts that a person of ordinary skill in the art would have understood that forming How-767’s routing structure according to the interconnect structure taught by Feild would involve a simple substitution of Feild’s cross-sectional interconnect structure for How-767’s exemplary cross-sectional interconnect structure to obtain predictable results. See id. (citing Ex. 1006 ¶ 153). Accordingly, we understand that Feild’s advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance would be achieved by forming How-767’s routing structure according to Feild’s cross-sectional interconnect structure. In sum, based on the entire trial record, we determine that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify How-767 by “forming How-767’s routing structure according to the interconnect structure taught by Feild” in order to obtain the advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance. See Pet. 62–65 (citations omitted); KSR, 550 U.S. at 418.” slip op. at 76

  Patent outcomesUS 6,459,625 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,459,625
• Twitter, Inc. v. Palo Alto Research Center Inc.Instituted
  PTAB · Mar 15, 2022 · IPR2021-01398 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 1–18 because the petition showed a reasonable likelihood of prevailing on at least one claim under § 103.

  RulingsInstitution decision

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

    “review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the ’475 patent (December 2002) “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to web data analysis, or the equivalent.” Pet. 11 (citing Ex. 1003 ¶ 24). Patent Owner presents no proposed qualifications. See generally Prelim. Resp.” slip op. at 6

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

    “Neither party proposes any explicit claim constructions. Pet. 10; see generally Prelim. Resp. At this stage, no need exists to construe a claim term expressly to resolve the parties’ disputes. See 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

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “none of the combinations in the Petition were previously presented. Further, there is no overlap between the arguments made during examination and the representations of the prior art in this proceeding. Therefore, with respect to Chen and Cook, the same or substantially the same art or arguments were not previously presented. Further, even if Chen is cumulative to Heer as alleged by Patent Owner, Petitioner demonstrates that the Examiner materially erred for the reasons explained below. As the parties indicate, the Examiner stated as reasons for allowance for the “independent claims,” that “the prior art of record does not teach: combining the multi-modal information for content portions associated and the proximal information for content portions associated with the user path to form a user profile having a unified representation.” See Pet. 85; Prelim. Resp. 26; Ex. 1002, 123. Patent Owner now argues that the primary difference between Heer (or Chen, if, as Patent Owner alleges, it is “cumulative” to Heer) and independent claims 1 and 10 is that the claims require using proximal information in the user profile. See Prelim. Resp. 26. But as discussed above (§ I.E.5), Patent Owner also admits that the asserted prior art at least separately teaches using proximal information and multi-modal information. See Prelim. Resp. 36–37 (arguing that “each” of the prior art references relied upon by Petitioner “relates to using either multi-modal information or proximal information, but not both”). Nevertheless, nothing in the prosecution history, including the Examiner’s reasons for allowance or citation and limited discussion of Heer with respect to dependent claims (Ex. 1002, 78–79, 123), shows that the Examiner was aware that Heer (even if it is cumulative to Chen) taught everything in the independent claims except for combining proximal information as part of the user profile. Also, the prosecution history does not show that Patent Owner informed the Examiner, or that the Examiner was aware, of Patent Owner’s current admission that the prior art “relates to using either multi-modal information or proximal information, but not both.” See Prelim. Resp. 36–37. Petitioner shows that the Examiner did not apply Heer as the primary basis for rejecting independent claims 1 and 10, which Petitioner essentially does here with respect to Chen. See Pet. 84 (arguing that “Heer was relied on, but only for dependent claims 9 and 18”) citing Ex. 1002, 78–79); see Advanced Bionics, Paper 6 at 10–11 & n.10 (reasoning that Becton Dickinson factor c, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” is a material error factor). And Petitioner sufficiently shows that “Chen and Cooke were not previously presented” during prosecution. Pet. 84. As summarized above, Petitioner sufficiently shows that Chen, with Chi and other secondary references, suggests combining multi-modal information with proximal information such as surrounding text associated with links and images wherein Chen specifically teaches flexibly employing all manner of such multi-modal information to aid in assigning users to clusters. See supra § II.E.; Ex. 1004 ¶¶ 16, 18, 22; Advanced Bionics, Paper 6 at 9–11 & n.10 (reasoning that Becton Dickinson factor f, “additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments,” and Becton Dickinson factor e, the extent the Petition shows error, are a material error factors).” slip op. at 36

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,043,475
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Rehearing granted
  PTAB · Jul 1, 2016 · IPR2016-00326 · APJ Kevin W Cherry · IPR · Rehearing

  On rehearing, the Board instituted IPR on claims 1, 2, and 13 based on anticipation by Anderl and obviousness over Anderl or Anderl and Hendry.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “On June 17, 2016, Patent Owner filed a Request for Rehearing (Paper 13, “Request” or “Reh’g Req.”) of our Decision to Institute (Paper 10, “Decision”) an inter partes review in this case. We have reviewed Patent Owner’s Request, and we agree that we overlooked the matters identified in the Request. See Reh’g Req. 2–4. Thus, for the reasons stated in the Request, we grant Patent Owner’s Request for Rehearing. On rehearing, we withdraw our previous Decision and reconsider our Decision in light of the full record, as Patent Owner requests. Id. at 4. Pursuant to this reconsideration, we issue the instant Amended Decision to Institute.” slip op. at 2

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

    “determine that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1, 2, and 13 (“the challenged claims”) of the ’537 patent.” slip op. at 2

  • BurdenOther

    “limitation, we are persuaded that Petitioner has shown adequately that Anderl discloses “said appended information featuring said at least one associated type of permission for accessing the stored data,” as recited in claim 1. Patent Owner focuses narrowly on the value of the data included in protection bytes 43 to 45 of Anderl. See Prelim. Resp. 13–15. Yet the claim does not focus only on the data alone, but instead recites “appended information.” As the Petition explains, Anderl discloses that the information is appended based on location in file as the value at the particular location. See Pet. 23–24. In particular, Anderl discloses that each file includes prefix section 41 that is located in the first record of each file and contains file identification number 42 and protection bytes 43, 44, and 45. Ex. 1005, 6:57–60. Anderl states that “[t]he protection bytes 43 through 45 specify the file permissions.” Id. at 6:65–66 (emphasis added). As Anderl discloses,” slip op. at 20

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

    “not persuaded that “type of permission” is limited to only the type of action that can be performed, e.g., reading or writing, with respect to the data. Instead, the Specification repeatedly refers to the “types of permissions” as “for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.” See, e.g., Ex. 1001, Abstract (“The device, method and system enable various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 2:32–36 (“The present invention enables various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 3:4:26–30 (same). Given this broader usage in the Specification, for purposes of this decision, the “type of permission” is for determining access to the stored data, such that if an attempt is made to access particular data that does not have a suitable permission type, access is denied. The access, if not denied, may include reading from or writing to the stored data. As for “featuring,” we are not persuaded that “featuring,” as used in claim 1 of the ’537 patent is synonymous with “represent,” as Patent Owner contends. A relevant meaning of “featuring” is “to be an important part or aspect of something.” See Ex. 3001. This meaning only requires that the thing that is featured be an important part or aspect, not that it correspond to or represent the thing. Patent Owner does not point us to any disclaimer or definition that would limit this meaning. See Prelim. Resp. 13–15. Instead, the Specification appears to use the related term “feature” in this ordinary sense. See, e.g., Ex. 1001, 4:54–56 (“As another option, the device may feature a single chip with a microprocessor and firmware for operating the data access features ….”); 5:25– 27 (“A system 10 features a CPU 12 for executing instructions….”); 8:15–19 (“For example, an access control code could be implemented with a combination of different types of data, each of which could again feature a separately selected and assigned data access permission, which optionally and preferably is different for each portion of the data.”). Moreover, the portion of Specification cited by Patent Owner (Prelim. Resp. 12–13 (citing Ex. 1001, 6:34–61)) makes clear that it only refers to a preferred embodiment and the permissions do not need to be stored as a “code,” i.e., specific information or data representing the permission. See id. at 6:35–36 (“According to preferred embodiments…”), 6:43–47 (“If such a permission is to be stored in an abbreviated code, the code for this particular type of permission could be given as ‘R/W/WP’, for example. Such a code could optionally be stored in the non-volatile 16, for example.” (emphases added)). Such optional language is not sufficient to limit the claimed “appended information” to only something that “represents” the permission, such as a code. See Prolitec Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the inventors did not intend to limit [the claim]. . . .”); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (noting that non-limiting examples are not sufficient to redefine a term).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,324,537
• Apple Inc. v. Virnetx Inc.All claims unpatentable
  PTAB · Jul 29, 2015 · IPR2014-00483 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 7, 8, 10, 12, 13, 15, and 17 are unpatentable as anticipated by Provino; claims 2–5 and 18 are unpatentable as obvious over Provino with Kosiur and Xu, respectively.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Apple Incorporated (“Petitioner”) also filed a Petition (Paper 2) seeking an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18 of the ’274 patent pursuant to 35 U.S.C. §§ 311–319 in Case IPR2014- 00483 (“’483 IPR”). Noting that Microsoft Corporation’s Petition and Apple Incorporated’s Petition were substantially identical in material aspects, the Board instituted an inter partes review of claims 1–5, 7, 8, 10, 12, 13, 15, 17, and 18, and joined IPR2014-00483 with IPR2014-00403 pursuant to 35 U.S.C. § 315(c). See ’483IPR, Paper 11, 6–9.2 Thereafter, pursuant to a settlement agreement, the present proceeding was terminated with respect to Microsoft Corporation only. Paper 38.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDisclaimer not foundDecided for petitioner

    “proceeding somehow limits the claims here that Patent Owner otherwise could have moved to amend under a broadest reasonable construction, Patent Owner’s arguments were not “unambiguous,” and do not “call for the application of prosecution history disclaimer.” See PO Resp. 17–18. There was no “express disclaimer,” Bigio, 381 F.3d at 1325, or “unambiguous disavowal[],” Grober, 686 F.3d at 1341.” slip op. at 11

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

    “As the latter two sentences show, the ’274 patent Specification describes placing field hopping data (i.e., an address hopping technique, see id. at 46:64–47:11), into a payload portion of a data packet. The Specification does not tie “tunneled” packets into a specific requirement that requires a change in formatting––above and apart from any protocol formatting or structural change that may happen to, or does, occur by placing one type of data field (header) into another type of data field (payload). After discussing the insertion of the field hopping data into the payload portion, the Specification then describes that these “modified message packets preferably conform to the UDP protocol,” or “[a]lternatively . . . can conform to the TCP/IP protocol or the ICPM protocol.” Id. at 50:30–35. In other words, if there is a change in a protocol in these disclosed examples––for example, from one protocol format to a UDP protocol format––any change appears to come in preferred embodiments and after the packets have been modified (i.e., tunneled). Accordingly, based on the foregoing discussion, we modify our construction as set forth in the Institution Decision, such that “tunnel packeting” means “placing data or information from one field, such as a header, into another packet field, such as a payload, wherein the two fields normally have different structures or formats, or placing data structured in one format within the format of another protocol.”” slip op. at 22

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

    “In any event, to the extent it is material, the ’274 patent Specification employs the term “user’s computer” in a “conventional scheme . . . shown in FIG 25. A user’s computer 2501 includes a client application 2504 (for example a web browser) . . . .” Ex. 1001, 38:61–63. Although Patent Owner refers to this “conventional” computer as “another embodiment,” the ’274 patent Specification disparages the “conventional architecture” that employs a user’s computer, because it is not secure enough. See Ex. 1001, 39:4–13; PO Resp. 21. In general, the ’274 patent Specification states that “[t]he present invention” involves a “client computer” with a “client application” that “communicates with a server.” See Ex. 1001, 7:40–44. This description of “[t]he present invention” does not mention a “user’s computer.” Therefore, the ’274 patent Specification does not repeatedly treat a “client computer” and a “user’s computer” as the same. The broadest reasonable construction of a client computer is a computer associated with a client.” slip op. at 23

  Patent outcomesUS 7,987,274 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,987,274

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.