- AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision
The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26
Patent outcomesUS 10,841,958 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,841,958 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612 - PTAB · May 9, 2024 · IPR2024-00099 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds and granted joinder to IPR2023-00673.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’436 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“compressed, or use security protocols, then the packets transit the packet engine. Pet. 41–42 (citing Ex. 1004 ¶¶ 49, 51, 53). Patent Owner argues that only the SA parameter association task in Pham may be offloaded. Prelim. Resp. 26–27 (citing Ex. 1004 ¶¶ 38, 51). Patent Owner’s argument here implies that the filtering function remains at the ingress processor and that some packets will be filtered and never reach the packet engine. See id. (citing, e.g., Ex. 1004 ¶ 38); Ex. 1004 ¶ 38 (“In the preferred embodiments of the present invention, the ingress processors 30, 34 are tasked with filtering and routing functions . . . .”). The statement Patent Owner relies on is not in the same section as the one Petitioner relies on. In other words, it does not appear on this record that we can limit the disclosure of paragraph 51 based on the statements in paragraph 38. On this record, we are not persuaded that only the SA parameter association task can be offloaded. As Pham notes, tasks can be moved between processors to perform load balancing. Ex. 1004 ¶ 54. We see no disclosure that prevents certain tasks from being load balanced or otherwise tasked to the security processor.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“find them persuasive on this record. Id. at 32–33. At a high level, Patent Owner’s arguments are that Petitioner’s modification to Pham would “increase[] complexity and resources.” Id. at 33. On this record, this argument is unpersuasive because even if the addition of Wu’s intrusion detection system was somehow more complex, the reason to combine it is to gain certain beneficial features. See, e.g., Pet. 30–31. Patent Owner’s arguments do not show that the alleged increase in complexity would somehow dissuade a person of ordinary skill in the art from including these beneficial features. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (alteration in original); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - Snap Inc. / Facebook, Inc. et al. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Electric Power · Phillips · KSR · GrahamPatents in suitUS 8,489,599 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8
Patent outcomesUS 8,878,949 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,878,949 - 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 · GrahamPatents in suitUS 7,043,475 - Samsung Electronics Co. Ltd / Samsung Electronics America, Inc. et al. v. Neonode Smartphone LLCRehearing grantedPTAB · Dec 3, 2021 · IPR2021-00144 · APJ Michelle N Ankenbrand · IPR · Rehearing
Granted rehearing and instituted IPR of claims 1–6 and 12–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“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). Petitioner, as the party challenging the Decision, has the burden of showing that we should modify the Decision. Id. When rehearing a decision on a petition, we review the decision for an abuse of discretion. Id. § 42.71(c). “An abuse of discretion occurs if the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a record that contains no evidence on which the Board could rationally base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 442 (Fed. Cir. 2015).” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that we misapprehended Hirayama307’s distinction between icon 41 and window 43 and, as a result, misapprehended the Petition’s arguments related to icon 41. Specifically, Hirayama307 discloses that window 43 appears “after having touched the desired icon 41 with the point of the pen 3,” and that window 43 is “the processing display form” of icon 41. Ex. 1006, 5:64–66. Thus, contrary to our determination in the Decision that “Hirayama307 appears to duplicate or relocate the representation of the function, i.e., icon, during gliding,” a closer reading of Hirayama307 indicates that icon 41 and window 43 are different, though Hirayama307 at times uses the term “large icon” or “enlarged icon” to describe window 43. See, e.g., Ex. 1006, 6:7–14, 6:22–23, 6:30. We acknowledge that Patent Owner disagrees with Petitioner, but we find that the parties’ disagreement raises an issue of fact that is best resolved on a full trial record. Accordingly, we determine that Petitioner shows sufficiently at this stage of the proceeding that Hirayama307 discloses the limitation “wherein the representation of the function is not relocated or duplicated during the gliding.” In light of this determination, we need not address Petitioner’s additional arguments related to whether Hirayama307 discloses the limitation at issue.10” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“2:48–51. Hirayama307 explains that, after the user moves the pen point from icon 41 to display portion 3, “an icon (hereinafter . . . referred to as a window) enlarged in the form of the processing display mode of the desired icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.” Id. at 5:3–12.” slip op. at 6
- Other 314aInstituted
“§ 314(a). See 35 U.S.C. § 314(a) (“The Director may not authorize an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all, the PTO is permitted, but never compelled, to institute an IPR proceeding.” (citing 35 U.S.C. § 314(a))). When deciding whether to exercise our discretion, we may consider the number of claims and grounds that meet the reasonable likelihood standard and whether, in the interests of efficient petition should be denied. Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 42 (PTAB Jan. 24, 2019) (informative); SAS Q&A’s, Part D, Effect of SAS on Future Challenges that Could Be Denied for Statutory Reasons, D2 (June 5, 2018), available at https://www.uspto.gov/sites/ default/files/documents/sas_qas_20180605.pdf. Here, Petitioner demonstrates a reasonable likelihood of prevailing on its challenges involving Hirayama307, which address all challenged claims. On this record, and based on the particular facts of this proceeding, we find that instituting a trial is an efficient use of the Board’s time and resources.” slip op. at 8
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,095,879 - Skechers USA, Inc. v. Adidas AGNo claims unpatentablePTAB · Apr 25, 2018 · IPR2017-00127 · APJ Josiah C Cocks · IPR · Final written decision
Claims 1–30 were not shown unpatentable under §103 because the proposed prior-art modifications lacked adequate support and rational underpinning.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The basis of disagreement boils down to an evaluation of a skilled artisan’s experience. In that respect, Petitioner urges that the artisan generally has “substantial experience in the structural design of flexible elements and plastic polymers,” whereas Patent Owner characterizes the experience as directed to “biomechanical systems.” The ’079 patent is clearly directed to matters of shoe construction, and takes note, for instance, of the desirability of “cushioning and biomechanically supporting the foot.” Ex. 1001, 1:27–29. It is also apparent that an overarching focus of the ’079 patent is concern with “balance” and “support” of a “foot against misorientations such as pronation and supination (i.e. a tilting movement of the forefoot part to the medial and the lateral side, respectively).” Id. at 2:34–39. Such concerns, in our view, go beyond general experience in the design of flexible elements and plastic polymers. In that regard, we credit the testimony of Patent Owner’s declarant, Dr. Hinrichs, that a person of ordinary skill in the art would have experience with biomechanical systems, such as shoes. See Ex. 2001 ¶¶ 14–15. We have considered the respective opinions of the parties when it comes to the level of ordinary skill in the art. In reaching our decision as to the merits of this proceeding, for the reasons discussed above, we are persuaded by Patent Owner’s evidence as to the ordinary skill of an artisan.” slip op. at 12
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We observe that Patent Owner relies on content of the ’079 patent at column 11, lines 31–34 to support the meaning of “leaf spring[s]” and “leaf spring element[s]” that it advances. That portion of the ’079 patent describes embodiments of the invention appearing in Figures 19 to 25. Referencing particular leaf spring elements 22 and 23 of those embodiments, the ’079 patent states that “[t]ypically the restoring force exerts a force that has a component orthogonal to the sole plate (e.g., for cushioning) and a component parallel to the sole in the rearward direction (e.g., for acceleration).” Ex. 1001, 11:31–34. While that language mirrors the meaning of “leaf spring[s]” and “leaf spring element[s]” proposed by Patent Owner, we discern that the noted clause also begins with the term “[t]ypically.” That leaf spring elements may “typically” include a component parallel to the sole in the rearward direction does not lend itself to the conclusion that a “leaf spring” necessarily includes such a component. Rather, it conveys the opposite. In that respect, the plain understanding of the pertinent content of the ’079 patent is that, while, perhaps, not typical, the ’079 patent contemplates other component arrangements, logically including those in which the parallel component is not in the rearward direction.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 21–25 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 6, 8–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that are “integrally joined to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently discloses that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally. Petitioner and Mr. Ganaja also inadequately explain why combination of Luthi ’202’s teachings with those of either Luthi ’800 or Chan would result in the above-noted “central cavity” as a part of the directional element of Luthi ’202’s Figure 17. Although Luthi ’800 and Chan may show spaces or cavities in components of their shoes, there appear substantial differences in the designs of those shoes, and in particular the cushioning aspects, as compared with Luthi ’202’s Figure 17. We credit Dr. Hinrichs’s and Dr. Luthi’s testimony that the presence of such a cavity as shown in Luthi ’800 and Chan would prove detrimental to the medial-lateral stability of Luthi ’202’s shoe, and specifically the directional element of such a shoe that is depicted in Luthi ’202’s Figure 17. See Ex. 2001 ¶ 42; Ex. 2005 ¶¶ 11–13. To that end, we also find inadequate Petitioner’s general position that combining the teachings of Luthi ’202, Luthi ’800, and Chan would result simply in a “combination of familiar elements according to known methods that would yield predictable results,” and “well within the knowledge and skill of persons of ordinary skill in the art . . .” Pet. 35. We are not persuaded that any such combination would yield the “predictable results” advanced by Petitioner, or that “well within the knowledge and skill” of an artisan cited by Petitioner constitutes rational underpinning to support an obviousness conclusion. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (An assertion of unpatentability based on “obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”)” slip op. at 22
Patent outcomesUS 9,339,079 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,339,079 - Skechers USA, Inc. v. Adidas AGNo claims unpatentablePTAB · Apr 25, 2018 · IPR2017-00125 · APJ Josiah C Cocks · IPR · Final written decision
Claims 20–32 were not shown unpatentable under §103 because the proposed modifications to Luthi ’202 were unsupported and relied on hindsight.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“artisan’s experience. In that respect, Petitioner urges that the artisan generally has “substantial experience in the structural design of flexible elements and plastic polymers,” whereas Patent Owner characterizes the experience as directed to “biomechanical systems.” The ’285 patent is clearly directed to matters of shoe construction, and takes note, for instance, of the desirability of “cushioning and biomechanically supporting the foot.” Ex. 1001, 1:19–21. It is also apparent that an overarching focus of the ’285 patent is concern with “balance” and “support” of a “foot against misorientations such as pronation and supination (i.e. a tilting movement of the forefoot part to the medial and the lateral side, respectively.” Id. at 2:28– 31. Such concerns, in our view, go beyond general experience in the design of flexible elements and plastic polymers. In that regard, we credit the testimony of Patent Owner’s declarant, Dr. Hinrichs, that a person of ordinary skill in the art would have experience with biomechanical systems, such as shoes. See Ex. 2001 ¶¶ 14–15. In crediting Dr. Hinrichs’s assessment of the level of ordinary skill in the art we observe that, although Petitioner makes reference to the testimony of its declarant Mr. Ganaja (see Pet. 6 (citing 1002 ¶¶ 39–43)), Mr. Ganaja makes no evaluation of his own in that testimony in connection with the level of ordinary skill. We have considered the respective opinions of the parties when it comes to the level of ordinary skill in the art. In reaching our decision as to the merits of this proceeding, for the reasons discussed above, we are persuaded by Patent Owner’s evidence as to the ordinary skill of an artisan.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 18–21 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 8 and 11–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that “come together integrally to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently disclosed that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“column 11, lines 23–26 to support the meaning of “leaf spring[s]” and “leaf spring element[s]” that it advances. That portion of the ’285 patent describes embodiments of the invention appearing in Figures 19 to 25. Referencing particular leaf spring elements 22 and 23 of those embodiments, the ’285 patent states that “[t]ypically the restoring force exerts a force that has a component orthogonal to the sole plate (e.g., for cushioning) and a component parallel to the sole in the rearward direction (e.g., for acceleration).” Ex. 1001, 11:23–26. While that language mirrors the meaning of “leaf spring[s]” and “leaf spring element[s]” proposed by Patent Owner, we discern that the noted clause also begins with the term “[t]ypically.” That leaf spring elements may “typically” include a component parallel to the sole in the rearward direction does not lend itself to the conclusion that a “leaf spring” or “leaf spring element” necessarily includes such a component. Rather, it conveys the opposite. In that respect, the plain understanding of the pertinent content of the ’285 patent is that, while, perhaps, not typical, the ’285 patent contemplates other component arrangements, logically including those in which the parallel component is not in the rearward direction. Indeed, our above-noted understanding is also consistent with other embodiments described in the ’285 patent. For instance, embodiments depicted in Figures 13–16 show elements 23 extending in a forward direction with respect to the sole. The elements 23 of those figures are described as “leaf spring elements.” Id. at 10:15–50. Moreover, the ‘285 patent makes explicit that those leaf spring elements “are either forwardly or rearwardly directed.” Id. at 10:49–50. Patent Owner’s position that the claimed “leaf springs” or “leaf spring elements” require a parallel component extending in the rearward direction is inconsistent with these particular figures and the accompanying description in the ’285 patent. To that end, Patent Owner does not explain persuasively why the meaning of the term “leaf spring” encompasses only a parallel component in the rearward direction, yet the ’285 patent clearly provides that leaf springs may also have components that extend in the forward direction. Accordingly, for the foregoing reasons, we again conclude that “leaf spring[s]” and “leaf spring element[s]” mean “a flexible member that deflects and provides a restoring force with an orthogonal and a parallel component in response to a load applied to the sole.” We discern that it is unnecessary to construe expressly any other claim term of the ’285 patent. See 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“substantial dissection and modification of Luthi ’202’s Figure 17. That dissection is premised on Mr. Ganaja’s assessment of what a person of ordinary skill in the art would take from the record at hand. Yet, in our view, neither Mr. Ganaja nor Petitioner explains adequately how the teachings of the prior art would have led one down the path that they advocate. For instance, it is decidedly unclear from the record that any “longitudinal groove” as advanced in Petitioner’s annotated illustrations of Luthi ’202’s Figure 17 reproduced herein exists in the configuration proposed by Petitioner. Although Petitioner and Mr. Ganaja postulate that it does exist, Luthi ’202’s teachings are less than determinative in that respect. We credit the testimony of Dr. Hinrichs and Dr. Luthi, that no such groove or “gap” exists as proposed by Petitioner. PO Resp. 18–21 (citing Ex. 2001 ¶¶ 32–35, 42–43; Ex. 2005 ¶¶ 8 and 11–13). Moreover, even if such groove does exist, neither Petitioner nor Mr. Ganaja adequately explains why the presence of such groove would create at least two leaf springs or leaf spring elements that “come together integrally to form a single end not directly connected to the sole plate,” as required by all the claims involved in this proceeding. We agree with, and credit, the testimony of Dr. Hinrichs that “Luthi ’202 consistently disclosed that the strut elements run the entire width of the shoe.” Ex. 2001 ¶ 32 (citing Ex. 1005, 3:47–50 (“the strut elements 22 extend substantially from the medial edge of the lateral edge of lower plate 26 . . .”)). In extending the entire width of the shoe, strut elements 22 (and 222) are more appropriately viewed as a single element (e.g., a spring element) rather than multiple spring elements that come together integrally.” slip op. at 20
Patent outcomesUS 9,345,285 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,345,285
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.