• Deltran USA LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11

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

    “As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14

  • Strike new argumentNew argument consideredOther

    “Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15

  Patent outcomesUS 11,667,203 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,667,203
• Lenovo (United States), Inc. v. University Of RochesterSome claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01225 · APJ Thu A Dang · IPR · Final written decision

  Claims 1 and 3–7 are unpatentable as obvious; claims 8–12 were not shown unpatentable because the asserted grounds did not establish asynchronous operation between domains.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification is the ‘single best guide to the meaning of a disputed term,’ . . . and ‘is, thus, the primary basis for construing the claims.’” Trs. of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citations omitted). Although Patent Owner contends that the Specification disparages systems that impose significant restrictions on the possible choices of frequencies (PO Resp. 21), we find availing Petitioner’s contention that “[s]upport for Patent Owner’s construction is absent from the specification.” Pet. Reply 10. As Petitioner points out, Patent Owner’s claim construction “appears to be based on a single paragraph of the ’443 patent referring to preexisting ‘synchronization schemes [that] restrict the phase relationship and relative frequencies of the clocks.” Id. That is, the only reference by Patent Owner to the Specification is that the Specification states that “Some synchronization schemes restrict the . . . relative frequencies of the clocks, thereby eliminating the need for hardware arbitration [27]. Unfortunately, these schemes impose significant restrictions on the possible choices of frequences.” PO Resp. 26 (citing Ex. 1001, 6:32–36). We agree with Petitioner that such disclosure in the Specification “does not describe how these synchronization schemes ‘restrict the phase relationship and relative frequencies’ with any specificity.’” Pet. the Specification that some schemes impose restrictions on the possible choices of frequency is not a disparagement of any system that has limited choices of frequency or would preclude the claims from covering such prior art techniques. Instead, as Petitioner points out, the Specification of the ’443 patent states “[t]he preferred embodiment uses four domains […] so that domains may vary somewhat in size and still be covered by a single clock.” Id. (citing Ex. 1001, 5:57–59). As Dr. Baker testified in support of Petitioner’s contention, “the preferred embodiment of the ’443 patent relies on a single external master clock that distributes a signal to the local PLL of each domain.” See Ex. 1032 ¶ 9. Thus, although Patent Owner contends that clock signals generated based on a master clock cannot be interpreted to be generated independently of the clock signals generated for others of the plurality of domains (PO Resp. 49), we agree with Petitioner that such claim construction would “exclude[] the preferred embodiment of the ’443 patent,” which is disfavored. Pet. Reply 11. For the reasons discussed above, we conclude that “changeable independently” of the other domains does not require that the separate clocks in the plurality of domains be globally-asynchronous.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “As both parties recognize, (PO Resp. 5; Pet. Reply 12), “[actual] [r]eduction to practice in the United States requires that the invention be embodied in tangible form.” Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002). In particular, actual reduction to practice requires a showing of the invention in a physical or tangible form that shows every element. not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445 (Fed. Cir. 1984). Here, Patent Owner does not provide any evidence showing every element of the claims in physical or tangible form, as required, but rather contends that the Specification refers to the Paper, wherein the Paper stated that simulation using a software, SimpleScalar, was performed. PO Resp. 16. We are persuaded by Petitioner’s contention that the SimpleScalar simulation was not an actual reduction to practice of the claimed invention. Pet. Reply 12. As Petitioner points out, claim 1, for example, is directed to a “microprocessor,” wherein “Patent Owner has presented no evidence and has not alleged that any physical microprocessor was ever produced or operated.” Id. at 13; see PO Resp. 15–17. And as Petitioner points out, “Patent Owner has produced no evidence of any physical prototype of the claimed microprocessor that could have validated the simulation.” Pet. Reply 13–14. We agree with Petitioner that, at most, such simulation “demonstrated feasibility for prototyping of a microprocessor,” but not a tangible form of the microprocessor itself as required for an actual reduction to practice. Id. at 14; see also Standard Mfg. Co. v. United States, 25 Cl. Ct. 1, 67 (1991) (“The feasibility of the optical alignment system may have been proven by the optical mock-up, but the optical mock-up was not a reduction to practice of the proposed MHU–145/M trailer.”).” slip op. at 36

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Here, we find that Petitioner has not met its burden to prove that one of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  • BurdenMixed

    “of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9

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

    “First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27

  Patent outcomesUS 10,656,755 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,656,755
• Apple Inc. v. Ferid AllaniInstituted
  PTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.

  RulingsInstitution decision

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

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . 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). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

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

    “We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8

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

    “We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 10,943,058
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00538 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held all challenged claims of the ’933 and ’054 patents not unpatentable because the claims were entitled to the December 22, 2009 priority date, making the asserted prior art unavailable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time of the invention as someone that would have had “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three years of experience working with wirelessly connected mobile devices that used common wireless communications protocols such as Bluetooth and 802.11.” 537 Pet. 17 (citing Ex. 1203 ¶¶ 29–32). Petitioner also contends that this description “would not differ materially between December 2008 and June 2013,” the earliest possible priority date for the patents-at-issue and the priority date alleged by Petitioner, respectively. Petitioner further contends that more education “would compensate for less work experience and vice versa.” Id. Petitioner. 537 PO Resp. 6−7; 538 PO Resp. 6−7. Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. We adopt Petitioner’s level of ordinary skill in the art particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 16

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

    “Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” 537 Pet. 17–18; 538 Pet. 18−19. Patent Owner does not contend that any terms require construction. 537 PO Resp. 6; 538 PO Resp. 6. We have not identified any terms that require construction for us to decide the threshold issue of priority. And given that the parties have no disputed terms, no claim terms are hereby construed.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The written description requirement is satisfied when “the missing descriptive matter” is necessarily present in the original “application’s specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Thus, it is sufficient to show that the written description actually or inherently discloses the claim element. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118−20 (Fed. Cir. 2001). We also note that Patent Owner argues that the field of the 948 application is a predictable application of wireless communications, which, compared to other complex and unpredictable technologies, would require a lower level of detail to satisfy the requirement. See Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018); see also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“the level of detail required . . . varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”); 537 PO Resp. 26−27; 537 Edwards Decl. ¶¶ 82, 87; 537 Surreply 8.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “1277 (Fed. Cir. 2011); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). At issue in the instant proceedings is the first requirement, whether the written description of the 948 application is sufficient, because Petitioner contends that the claims of the ’933 and ’054 patent are not entitled to claim priority to ancestry applications under 35 U.S.C. § 120. 537 Pet. 18.43 We disagree with Petitioner because we find that the claims are supported by the written description of the 948 application disclosure.” slip op. at 18

  Patent outcomesUS 9,173,054 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,173,054
• Apple Inc. v. Scramoge Technology Ltd.All claims unpatentable
  PTAB · Jul 27, 2023 · IPR2022-00351 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 2, 5–7, 14–16, 19, and 20 are unpatentable: claims 1, 2, 5, 6, 14–16, 19, and 20 as obvious over Suzuki, and claim 7 as obvious over Suzuki and Park.

  RulingsFinal written decision

  • Skill levelOther

    “III. DISCUSSION A. Claim Construction In an inter partes review proceeding, we construe a claim of a patent “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). 1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103, effective March 16, 2013. See Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011). Because the application from which the ’842 patent issued claims the benefit of priority to an application that was filed before this date, the pre-AIA version of § 103 applies. 2 Suzuki, U.S. Patent No. 8,421,574 B2, issued Apr. 16, 2013 (Ex. 1005). 3 Park, U.S. Patent No. 8,922,162 B2, issued Dec. 30, 2014 (Ex. 1006). Petitioner asserts that “no terms require specific construction.” Pet. 10. Patent Owner does not respond. See generally PO Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 6

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

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2021). Applying that standard, we construe the claim in accordance with its ordinary and customary meaning as would have been understood by one of ordinary skill in the art, taking into account the specification and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc). slip op. at 6

  • BurdenDecided for patent owner

    “Petitioner’s burden to show that [Patent Owner is] not entitled to the Korean date.” Tr. 44:3–4; see also PO Resp. 23 (“Petitioner cannot carry its burden to show that the ’842 patent should not be given its earliest alleged priority date to show that Park is prior art.”). That is not so. There are two distinct burdens of proof, namely, a burden of persuasion and a burden of production. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Petitioner carries “the burden of persuasion to prove unpatentability by a preponderance of the evidence,” and that burden never shifts to Patent Owner. Id. at 1379. The burden of production, however, is a shifting burden, the allocation of which depends on where in the process of trial the issue arises. See id. Here, Petitioner starts with the initial burden of production, which it satisfies by arguing obviousness based on its assertion that Park is prior art, as discussed above. See id. The burden of production then shifts to Patent Owner to argue or produce evidence that Park is not prior art because the challenged claims are entitled to the benefit of a filing date earlier than Park’s effective date of December 6, 2011. See id. at 1380. To shift the burden back to Petitioner, Patent Owner needs to present evidence to support an argument that the specification of the Korean application describes an invention understandable to an ordinarily skilled artisan and that the inventor actually invented the invention claimed in the ’842 patent. See Ariad Pharms., 598 F.3d at 1351; see also Dynamic Drinkware, 800 F.3d at 1378. Patent Owner does not do that here. Notably, Patent Owner does not address at all whether the disclosure of the Korean application provides support for claim 7 of the ’842 patent. See generally PO Resp. Indeed, counsel for Patent Owner admitted at oral argument that he did not know whether the record even contains an English language translation of the Korean application. Tr. 42:25–43:1 (counsel for Patent Owner referring to “the Korean patent application, which I’m not aware of whether or not we have a translation of that”). Without such translation, there can be no “objective inquiry into the four corners of the specification.” See Ariad Pharms., 598 F.3d at 1351. Counsel for Patent Owner further acknowledged that Patent Owner did not meet this burden of production. Tr. 44:7–13. We asked counsel at oral argument, “Well, if we disagree with you and say you have the burden to show support in the Korean application, then you lose on that issue?” Id. at 44:7–9. Counsel responded, “Well, yes, Your Honor. . . . If you disagree with me on that position, yes, that is correct.” Id. at 44:10–13. Because Patent Owner neither argues nor presents evidence that claim 7 is entitled to the benefit of the filing date of the Korean application, we determine that Petitioner shows that Park qualifies as prior art.” slip op. at 37

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for patent owner

    “Under 35 U.S.C. § 119, “the claims set forth in a United States application are entitled to the benefit of a foreign priority date if the corresponding foreign application supports the claims in the manner required by section 112, ¶ 1.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989). Section 112, ¶ 1 contains a written description requirement, which is satisfied here if “the disclosure of the [foreign] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and, “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.” slip op. at 36

  Patent outcomesUS 10,622,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR
  Patents in suitUS 10,622,842
• Momentum Dynamics Corporation v. Witricity CorporationSome claims unpatentable
  PTAB · Nov 22, 2022 · IPR2021-01167 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1, 9, 10, 12, 13, 18, 36, 37, 43, 44, and 49 are unpatentable; claims 46–48, 50, and 51 were not shown unpatentable, chiefly because the asserted art lacked the construed configurable bridge structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that [a] person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had a Bachelor’s degree in electrical engineering or an equivalent field, and at least two years’ industry experience, or equivalent research. Alternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to the design of circuits using inductive coupling, or an advance degree in electrical engineering or an equivalent field with at least one year of industry experience. Pet. 10 (citing Ex. 1003 ¶¶ 8–12). Patent Owner does not address the level of skill in the art. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed by the ’581 patent and prior art of record. We adopt Petitioner’s definition of the level of skill, except that we delete the phrase “at least” to avoid ambiguity.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Turning to our analysis, we first note that means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112, para. 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.6 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015). “[T]he use of the word ‘means’ in a claim element creates a rebuttable presumption that § 112, para. 6 applies.” Id. (citing Personalized Media 6 See supra, n.2 (explaining that the pre-AIA version of § 112 applies). Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed. Cir. 1998)). That presumption is not rebutted here. Neither party disputes that 35 U.S.C. § 112, paragraph 6 applies to all of the “means” terms recited in the ’581 patent claims. Pet. 11–16; PO Resp. 7–15, 34–35. “Construing a means-plus-function claim term is a two-step process. The court must first identify the claimed function. . . . Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Williamson, 792 F.3d at 1351 (citing Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012)). “Structure disclosed in the specification qualifies as ‘corresponding structure’ if the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Id. at 1352 (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)).” slip op. at 13

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We agree with Petitioner that the claimed function in the “means for converting” limitation is “converting a power from a power supply system to a power at an operating frequency for transfer of wireless energy.” Pet. 11. But we disagree with Petitioner that the corresponding structure is “an oscillator with amplifier; the half-bridge inverter in Figure 19A below; or the full-bridge inverter in Figure 19B.” See id. For the reasons below, we identify the disclosed structure corresponding to the “means for converting” limitation to be “a bridge circuit configurable between a full-bridge mode and a half-bridge mode, as shown in Figures 19A and 19B, and equivalents thereof.”” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “generally given their plain and ordinary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). For lexicography, “[e]ven when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1150 (Fed. Cir. 2012) (quoting Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004)). For example, “a patent’s repeated and consistent description of a claim term may inform its construction.” Groove Digital, Inc. v. United Bank, 825 Fed. App’x 852 (Fed. Cir. 2020) (nonprecedential) (citing Abbott, 696 F.3d at 1150). For disavowal to be applicable, “the specification must contain expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Cont’l Circuits, 915 F.3d at 797 (quotations and citations omitted).” slip op. at 26

  Patent outcomesUS 8,884,581 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,884,581
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentable
  PTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision

  Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9

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

    “We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14

  Patent outcomesUS 9,186,052 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,186,052
• Tripadvisor, LLC v. Mimzi, LLCAll claims unpatentable
  PTAB · Nov 12, 2020 · IPR2019-01080 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–4 and 7–18 are unpatentable over Roth and Ng; claims 1, 2, and 4, 7–18 are unpatentable over Roth and Fortescue; claim 3 and claims 1, 10, and 16 are not shown unpatentable on …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the invention, “would have (i) had a bachelor’s degree in Computer Science, Electrical Engineering, Computer Engineering, or a closely related field, and about 1–2 years of practical experience in that field; or (ii) had a master’s degree in Computer Science, Electrical Engineering, Computer Engineering or a closely related field.” Pet. 12 (citing Ex. 1004 ¶ 55). Patent Owner argues “POSITA must have some familiarity with social network databases (the technology at issue) in addition to Petitioner’s proposed general experience in Computer Science, Electrical Engineering, or Computer Engineering.” PO Resp. 15. On this record, we agree with Petitioner’s proposed definition of person of ordinary skill in the art, and adopt it for purposes of this Decision. Although the claims of the ʼ981 Patent recite searching a social network database, we find the fields of Computer Science, Electrical Engineering, and Computer Engineering would provide knowledge related to social networks and database search at a level commensurate with the disclosure of the ʼ981 Patent, and, thus, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art. We note, however, that our analysis below” slip op. at 6

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

    “Having considered the parties’ arguments and the fully developed trial record, we do not agree with Patent Owner’s proposed construction. The ʼ981 Patent describes metadata as data that includes “date data, time data, name data or location data.” Ex. 1001, 2:31–32. Figures 1 and 2 of the ʼ981 Patent list several examples of metadata, including, “Date of call, dictation or message,” “Start time,” “End Time,” Duration,” “Phone #,” “Phone # other party,” “Name,” “Name of other party,” “Date of Synopsis,” “Start time of Synopsis,” “End time of Synopsis,” “Duration of Synopsis,” “Location start,” “Location time 1,” “Location at end,” “Loc. Start synopsis,” and “Loc. End synopsis.” As can be seen, the ʼ981 Patent describes metadata broadly as encompassing a variety of data associated with various uses of the mobile device, such as calls, texts, dictation, photos, and the like. Patent Owner does not provide sufficient evidence that the word “associated” means “attached” in the context of the claim. The ʼ981 Patent does not use the term “attached” anywhere to describe the metadata associated with the spoken request, nor has Patent Owner identified the use of the term anywhere in the intrinsic evidence. Patent Owner cites Figures 1 and 2 of the ʼ981 Patent as supporting its construction but Figures 1 and 2 show that a time offset and location may be added to the transcript for each the time and location information. The claim, however, recites that metadata be associated with the spoken request, not that it be added to the transcript. Ultimately, we fail to see how these embodiments show that time and location are attached to the spoken request. In light of the parties’ arguments regarding unpatentability, we determine that we need not further construe the term “metadata associated with the spoken request.”” slip op. at 9

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

    “Having considered the parties’ arguments and evidence and the fully developed trial record, we do not agree with Patent Owner’s construction. The ʼ981 Patent states that it discloses “[a] system and method for providing social-network (Centralized Community Search database)—provided outputs to a mobile-electronic-device user in response to the user’s spoken request.” Ex. 1001, Abstract. The ʼ981 Patent explains that a user may wish to transmit their “text messages, photos, videos, call and voice annotations or synopsis (with speech-recognized text and location data), to a Centralized Community Search database” and that the user may designate this content to be public and “be shared with anyone via the Internet.” Ex. 1001, 14:64– 15:6. The ʼ981 Patent calls the public sharing of information as “Location Blogging.” See Ex. 1001, 15:1–6. The ʼ981 Patent explains that the publicly shared content contributed to the Centralized Community Search database may include information such as “a review of a restaurant or business.” Ex. 1001, 15:7–15. The Centralized Community Search database “may be searched or mined based on social network or type of information, restaurant location.” Ex. 1001, 15:22–26. Although the ʼ981 Patent describes information being stored in a centralized community search database, it does not restrict the community in any way nor does it describe the database as storing interpersonal relationships between community members. We find insufficient support in the ʼ981 Patent for such a limitation. Moreover, we find no support for Patent Owner’s argument that a social network database has a specific structure with relational tables and links between tables and between individuals, nor any support for the database being dynamic and two-way. We therefore decline to import such limitations into the claim. For purposes of this Decision, we do not consider whether the term “social network” should be given patentable weight. As explained below, even if we give the term patentable weight, when properly construed, the relied upon references teach a social network database. The ʼ981 Patent describes a centralized database that stores information, such as text messages, photos, videos, road warnings and restaurant reviews, accessible by anyone on the Internet, without disclosing or requiring the storage of interpersonal relationships. In light of the parties’ arguments regarding unpatentability, we need not further construe the term “social network database.”” slip op. at 12

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

    “We find Petitioner has demonstrated that one of ordinary skill in the art would have been motivated to combine Roth with Fortescue. Both references relate to performing internet searches and both discuss searching for restaurants. On this record, we are persuaded by Petitioner that a person of ordinary skill would have considered adding Fortescue’s social network elements and the ability to rank based on various factors to benefit Roth’s that a skilled artisan would have been motivated to modify Fortescue to add Roth’s speech to text feature for additional convenience for the user.” slip op. at 29

  Patent outcomesUS 9,128,981 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,128,981
• Red Hat, Inc. / Dell Inc. et al. v. Electronics & Telecommunications Research InstituteInstitution denied
  PTAB · Jul 10, 2019 · IPR2019-00467 · APJ Jameson Lee · IPR · Institution

  The Board denied institution on all challenged claims 1–14 because the petition did not show a reasonable likelihood of unpatentability on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine that 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). Having considered all submissions of both parties, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of any of claims 1–14. Accordingly, the Petition is denied, and no inter partes review is” slip op. at 2

  • Parallel petitionsNot reached

    “35 U.S.C. § 314(a) to not institute review in this case, because Petitioner has filed, simultaneously, two petitions for inter partes review of the same claims of the ’436 patent. Prelim. Resp. 33–35. According to Patent Owner, “[m]ultiple simultaneous petitions can pose more harassment risks than ones spread out over time as they multiply the patent owner’s work and expense in the compressed time frames of IPR proceedings.” Id. at 34. Patent Owner argues that multiple simultaneously filings amount to paying more to argue more, which is contrary to “the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete [review] proceedings.” Id. (citing 35 U.S.C. § 316(b)). We do not reach the issue of discretionary denial of the Petition, because, as discussed above, Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any claim.” slip op. at 39

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Level of Ordinary Skill in the Art Petitioner asserts that the level of ordinary skill in the art corresponds to “at least an undergraduate degree or equivalent academic or professional training in computer science or computer engineering, or a related field, and two years of industry experience in the field of data storage systems.” Pet. 7 (citing Ex. 1003 ¶ 11). Patent Owner has not offered an articulation of the level of ordinary skill in the art. We adopt the level of ordinary skill as articulated by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the appropriate level of education. The qualifier expands the range without an upper bound, i.e., encompassing a Ph.D. Degree and beyond, and thus does not meaningfully indicate the level of ordinary skill in the art. C.” slip op. at 11

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

    “Petitioner proposes a construction for the claims terms “disk partition” and “extent.” Pet. 9–11. Patent Owner does not disagree with Petitioner’s proposed constructions of “disk partition” and “extent.” It is not necessary in this Decision, however, to construe the term “extent.” Petitioner proposes that “disk partition” means “one of a plurality of disks or portions of a disk that form a logical volume.” Pet. 9. We have reviewed the specification and the prosecution history of record, and have no reason to disagree with Petitioner’s construction of “disk partition,” with the understanding that “form a logical volume” refers to actual storage space allocated exclusively to a logical volume. The specification of the ’436 patent does not indicate any overlap in the disk partitions of separate logical volumes. Petitioner also has not explained how such an overlap could be permitted without creating usage conflicts between logical volumes that would render the data unreliable. Petitioner’s articulation plus our additional clarification is consistent with the specification, particularly the illustration shown in Figure 2 reproduced above. Each of the first quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 1. Each of the second quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 2. Each of the third quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 3. Each of the fourth quarter of disks 1, 2, 3, and 4 is a disk partition forming logical volume 4. Each of the whole of disks 5, 6, 7, and 8 is a disk partition forming logical volume 4. D.” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 6,718,436

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.