- PTAB · Jul 7, 2025 · IPR2025-00221 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Kotzin, Petitioner contends that an ordinarily skilled artisan for the ’889 patent [w]ould have been someone knowledgeable and familiar with the wireless communications systems that are pertinent to the ’889 patent. That person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems. Pet. 18–19 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s contention as to the level of ordinary skill in the art. See generally, Prelim. Resp. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’889 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We point out that in contrast with Patent Owner’s case law, the “indefinite article ‘a’ or ‘an’ in patent parlance usually carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). “That ‘a’ or ‘an’ can mean ‘one or more’ is best described as a rule, rather than merely as a presumption or even a convention.” Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). “The subsequent use of definite articles ‘the’ or ‘said’ in a claim to refer back to the same claim term does not change the general plural rule, but simply reinvokes that non-singular meaning.” Id. “The exceptions to this rule are extremely limited: a patentee must evince a clear intent to limit ‘a’ or ‘an’ to ‘one.’” 01 Communique Lab’y, Inc. v. LogMeIn, Inc., 687 F.3d 1292, 1297 (Fed. Cir. 2012). But for the time being, we need not decide this issue.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“D. Ground 1: Claims 1, 2, 5, and 6 – Obviousness over Dateki Petitioner contends that claims 1, 2, 5, and 6 of the ’889 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Dateki. Pet. 21–47. Patent Owner opposes. Prelim. Resp. 33–64. Having considered the arguments and evidence before us, we determine that the record establishes a reasonable likelihood that Petitioner would prevail on this asserted ground of unpatentability. In their Preliminary Response, Patent Owner has limited the dispute at the institution stage mainly towards limitations [1.2], [1.3] and [1.4] and the claimed “control message.” We, therefore, address specifically the parties’ arguments with respect to these claim limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,664,889 - Bowmar Archery LLC v. Matthew FuttereNo claims unpatentablePTAB · Jun 30, 2025 · IPR2024-00401 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4, 7, 9, 11, 12, 15, and 17 were not shown unpatentable under any asserted anticipation or obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. For purposes of this decision and based on the record before us, we adopt Petitioner’s proposed definition of the level of ordinary skill. Also, we note that we would reach the same conclusions under either proposed standard.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. Ferrule Petitioner argues that the ’177 patent “defines ‘ferrule’ as a ‘generally cylindrical body,’” which interpretation Petitioner asserts “is consistent with the ordinary meaning to [an ordinarily skilled artisan].” Pet. 19 (citing Ex. 1001, 2:53–55; Ex. 1019 ¶ 61). Patent Owner does not address Petitioner’s proposed interpretation of this claim term. See generally PO Resp. We adopt Petitioner’s uncontested interpretation of “ferrule.” 2. Blade Member Patent Owner argues that an ordinarily skilled artisan “would” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As discussed in section II.C.2 above, we interpret a “blade member” to have a cutting surface. Petitioner does not support adequately its assertion that Lint’s barbs 19 have a cutting surface. Petitioner acknowledges that Lint discloses “barb 19,” but Petitioner merely labels the barbs as blade members in annotated versions of Lint Figure 2. Pet. 21–22, 24. Petitioner’s witness, Dr. Kuhn, provides substantially identical testimony, also failing to explain how Lint’s barbs have a cutting surface or perform a cutting function. See Ex. 1019 ¶¶ 68, 70. Such conclusory assertions fail to satisfy Petitioner’s burden of persuasion. To the contrary of Petitioner’s assertions, Lint discloses that its barbs do not perform a cutting function. Lint discloses that its barbs retract to the closed position upon impact with an animal. Ex. 1002, 2:62–67. Only when the arrowhead has “completely penetrated the flesh of an animal” does the spring urge the barbs into the extended position “to retain the arrowhead within the animal.” Id. at 2:67–70.6 Lint discloses that its barbs provide 6 During the hearing, Petitioner’s counsel argued that Lint’s disclosure of its barbs deploying “[a]fter the arrowhead 10 has completely penetrated the flesh of an animal” means the spring urges the barbs forward after the resistance to the removal of the arrow from an animal (id. at 1:53–57, 2:67–70), but Lint does not disclose its barbs as performing any cutting function. Thus, Lint’s barbs are not blade members with a cutting surface as we have interpreted the term above. Petitioner has failed to explain adequately how Lint discloses first and second blade members as recited in independent claims 1 and 11.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“A claimed modification to the prior art may be an obvious design choice if the claimed structure performs the same function as in the prior art and it presents no novel or unexpected result over the prior art. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (finding that the use of the claimed feature “would be an obvious matter of design choice” when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives); Ex parte Maeda, Appeal No. 2010-009814, at 6–7 (PTAB Oct. 23, 2012) (informative) (“‘design choice’ may be appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results” (citing In re Chu, 66 F.3d 292, 298–99 (Fed. Cir. 1995)). The ’177 patent explains that the purpose of the recited blade members is to maximize the cutting surface of the arrowhead through an animal’s soft flesh to increase the likelihood of a successful kill and minimize undue suffering of the animal. Ex. 1001, 1:26–30, 4:8–10, 4:21–24. The purpose of Lint’s barbs, on the other hand, is to resist removal of the arrow from an animal. Ex. 1002, 2:67–70. Indeed, Lint discloses that only when the arrowhead has “completely penetrated the flesh of an animal” does the spring urge the barbs into the extended position. Id. Thus, contrary to the conclusory assertions of Petitioner and Petitioner’s witness, Dr. Kuhn (see Pet. 49–51; Ex. 1019 ¶ 119), the recited blade members and Lint’s barbs perform vastly different functions. Neither Petitioner nor Dr. Kuhn explains adequately how the proposed modification to Lint’s barbs would be a mere matter of design choice. For at least the foregoing reasons, Petitioner’s first alternative” slip op. at 28
Patent outcomesUS 8,043,177 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,043,177 - PTAB · May 29, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Institution
The Board denied institution on all asserted grounds because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to address the required hardware action.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Turning now to our application of SuperGuide, we note the language of the claims and the specification, as correctly recognized by the Patent Owner, confirm that the conjunctive construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is correct. Prelim. Resp. 9–10.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied merits
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’887 patent. For the reasons discussed below, we deny the Petition and do not institute an inter partes review of all challenged claims of the ’887 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“K. Discretion to Denial Under § 314(a) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and not institute trial, given the state of the parallel district court litigation. Prelim. Resp. 26–38. Because we determine that Petitioner does not establish a reasonable likelihood of prevailing based on the merits of its challenges, we need not consider Patent Owner’s arguments regarding discretionary denial.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - Samsung Electronics Co., Ltd.All claims unpatentablePTAB · May 19, 2025 · IPR2024-00821 · APJ Scott A Daniels · IPR · Final written decision
Claim 23 is unpatentable as obvious over Spain-I, Hunzinger, and Nanda.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 3–4 (citing Ex. 1036 ¶¶ 31–32). Patent Owner waived entry of a Preliminary Response, did not enter a Patent Owner Response, and accordingly does not dispute the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’698 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“prosecution history of the ’698 patent for understanding the phrase “at least one number based on,” recited in claim 23. Pet. 6 (citing Ex. 1004, 165– 166). Petitioner proposes that the plain meaning of this phrase was expressly described during prosecution of the application that became the ’698 patent, where the Applicant argued that [a]s the specification explains, the “number based on []” is intended to refer to the output of any “formula,” including but not limited to a difference formula, that serves as a comparison “metric” (including “logical comparisons, arithmetically threshold (rounded) logical comparisons, arithmetic, probabilistic, fuzzy logic, neural network enabled, [or] heuristic” [¶00561], or “determinations that are based on derivatives, mathematical normalizations, correlation functions, functions” [¶0139]). Ex. 1004, 165–166. For purposes of this Decision we apply Petitioner’s proposed plain meaning for this phrase as it is reasonably based on the prosecution history of the ’698 patent and not disputed by Patent Owner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, apart from the “at least one number based on” phrase, we determine that no claim terms require express construction for this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“advance arguments directed to claim 23. Accordingly, Patent Owner has forfeited any argument regarding Petitioner’s contentions for these claims. We have reviewed Petitioner’s arguments regarding claim 23, which Patent Owner does not contest, and find them persuasive. Accordingly, we adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 23 would have been unpatentable over Spain-I, Hunzinger, and Nanda. 5. Conclusion on Obviousness For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claim 23 is unpatentable over the combined teachings of Spain-I, Hunzinger, and Nanda.” slip op. at 22
Patent outcomesUS 8,594,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,594,698 - Samsung Electronics Co., Ltd. v. Broadphone LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00155 · APJ Lisa L Tsang · IPR · Final written decision
Claims 1, 4, 5, 8, 14, 15, 18, 19, 22, 24, 25, and 28 are unpatentable as obvious over the stated combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art (“POSITA”) would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’811 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Patent Owner relies solely on the testimony of Dr. Cooklev to support its proffered claim construction. PO Resp. 5 (citing Ex. 2003 ¶ 34). Dr. Cooklev testifies, “[b]ased on my review of the patent and intrinsic record, [“device-specific target location”] has a plain and ordinary meaning and is used by the claims with that meaning, which requires a target location that is specific to a particular device.” Ex. 2003 ¶ 34. Other than further opining that “I see no lexicography or disclaimer in the intrinsic record indicating that ‘device-specific target [location]’ refers to a location that is generally applicable to numerous devices, or that the term otherwise has a meaning broader than its plain and ordinary meaning,” Dr. Cooklev provides no support for why the claimed “device-specific target location” “requires a target location that is specific to a particular device.” See id. We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c) Analysis Patent Owner’s Response does not advance arguments directed to claims 1 and 15. See generally PO Resp. Accordingly, Patent Owner has forfeited any argument regarding Petitioner’s contentions for these claims. See In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner forfeits an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted). We have reviewed Petitioner’s arguments regarding claims 1 and 15, which Patent Owner does not contest, and find them persuasive. Accordingly, we adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 15 would have been unpatentable over Spain-I, Hunzinger, and Nanda.” slip op. at 33
Patent outcomesUS 10,341,811 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,341,811 - Samsung Electronics Co., Ltd.All claims unpatentablePTAB · May 5, 2025 · IPR2024-00154 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–7, 9–10, 12–13, 15–16, and 21 are unpatentable as obvious over the stated combinations of Spain-I, Hunzinger, Nanda, and, for certain claims, additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 4 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the 9 The record does not include allegations or evidence of objective indicia of nonobviousness. technology and descriptions in the ’698 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“prosecution history of the ’698 patent for understanding the phrase “at least one number based on,” recited in claim 1. Pet. 6 (citing Ex. 1004, 166). Petitioner proposes that the plain meaning of this phrase was expressly described during prosecution of the application that became the ’698 patent, where the Applicant argued that [a]s the specification explains, the “number based on []” is intended to refer to the output of any “formula,” including but not limited to a difference formula, that serves as a comparison “metric” (including “logical comparisons, arithmetically threshold (rounded) logical comparisons, arithmetic, probabilistic, fuzzy logic, neural network enabled, [or] heuristic” [¶00561], or “determinations that are based on derivatives, mathematical normalizations, correlation functions, functions” [¶0139]). Ex. 1004, 166. Patent Owner does not dispute this interpretation. See generally, PO Resp. 2. For purposes of this Decision, and to the extent necessary for institution, we apply Petitioner’s proposed plain meaning for this phrase as it is reasonably based on the prosecution history of the ’698 patent. Apart from this, where neither party proposes any particular construction or indicates disagreement as to the meaning of any claim language, we need not explicitly construe any claim terms at this stage of the proceeding. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, apart from the “at least one number based on” phrase, we determine that no claim terms require express construction for this decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“remotely storing the fingerprint database, as does Nanda. Pet. 47–49. Dr. Almeroth testifies persuasively in support that “Spain-I describes configurations where the fingerprint database may be stored remotely from the MU,” and “Nanda also discloses similar features where the mobile device creates a fingerprint and transmits it for storage in a remote database for subsequent analysis.” Ex. 1002 ¶ 194 (citing Ex. 1005, Fig. 3, 4:28–58; Ex. 1006, 12:14–31; Ex. 1009, 5:22–42; Ex. 1010, 5:20–41; Ex. 1011, Fig. 3, 6:9–14, 6:15–30). As discussed above, claims 1, 2, from which claim 4 depends, and claim 5, from which claim 6 depends, are not contested by Patent Owner. Dr. Almeroth’s testimony as to the prior art teachings and disclosure with respect to claims 1, 2, 4, 5, and 6 is credible, supported by the record, and essentially unrebutted in this proceeding. Ex. 1002 ¶¶ 93–182, 191–201. Accordingly, based on the complete record, we are persuaded that Petitioner has shown a preponderance of evidence that claims 4 and 6 would have been obvious over Spain-I in view of Hunzinger and Nanda.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“argument as to claim 1, Patent Owner does not expressly dispute that Spain-I and Nanda fail to disclose “wherein the chosen location signal strengths were measured by a second portable RF communication device.” PO Resp. 5–13. Dr. Almeroth testifies persuasively, for example, that “Nanda explains ‘receiv[ing] fingerprints from multiple mobiles devices’ allows for a ‘much larger database of available access points than would be found in a single mobile device.’” Ex. 1002 ¶ 185 (quoting Ex. 1006, 12:14–31). With respect to a motivation to combine, Dr. Almeroth testifies further that a person of ordinary skill in the art would have considered “multiple MUs to create/maintain a larger database of antenna station fingerprint information, like that suggested by Nanda (Ex-1006, 12:26-29), thus beneficially expanding applications of Spain-I’s disclosed features.” Id. ¶ 187. For claim 6, as discussed above, Petitioner argues that Spain-I teaches remotely storing the fingerprint database, as does Nanda. Pet. 47–49. Dr. Almeroth testifies persuasively in support that “Spain-I describes configurations where the fingerprint database may be stored remotely from the MU,” and “Nanda also discloses similar features where the mobile device creates a fingerprint and transmits it for storage in a remote database for subsequent analysis.” Ex. 1002 ¶ 194 (citing Ex. 1005, Fig. 3, 4:28–58; Ex. 1006, 12:14–31; Ex. 1009, 5:22–42; Ex. 1010, 5:20–41; Ex. 1011, Fig. 3, 6:9–14, 6:15–30). As discussed above, claims 1, 2, from which claim 4 depends, and claim 5, from which claim 6 depends, are not contested by Patent Owner. Dr. Almeroth’s testimony as to the prior art teachings and disclosure with respect to claims 1, 2, 4, 5, and 6 is credible, supported by the record, and essentially unrebutted in this proceeding. Ex. 1002 ¶¶ 93–182, 191–201. Accordingly, based on the complete record, we are persuaded that Petitioner has shown a preponderance of evidence that claims 4 and 6 would have been obvious over Spain-I in view of Hunzinger and Nanda.” slip op. at 28
Patent outcomesUS 8,594,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,594,698 - Samsung Electronics Co., Ltd. v. Broadphone LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00153 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–10, 17–20, and 24–26 are unpatentable as obvious over the asserted combinations; the Board did not reach the additional Damarla and Houri grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’583 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, Petitioner submits that “no special constructions are necessary” beyond the plain meaning of the claims. Pet. 4. Patent Owner states in its Patent Owner Response that it “agrees that no formal claim construction is necessary.” PO Resp. 5. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, we determine that no claim terms require express construction for this decision.” slip op. at 10
- BurdenFwd all claims unpatentableUnpatentable
“Petitioner’s arguments regarding claim 1, which Patent Owner does not contest, and find them persuasive. Pet. 5–41. We adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 would have been unpatentable over Spain-I, Hunzinger, and Nanda.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“argument as to claim 1, Patent Owner does not expressly dispute that Spain-I and Nanda fail to disclose “wherein the chosen location signal strengths were measured by a second portable RF communication device.” PO Resp. 5–13. Dr. Almeroth testifies persuasively, for example, that “Nanda explains ‘receiv[ing] fingerprints from multiple mobiles devices’ allows for a ‘much larger database of available access points than would be found in a single mobile device.’” Ex. 1002 ¶ 186 (quoting Ex. 1006, 12:14–31). With respect to a motivation to combine, Dr. Almeroth testifies further that a person of ordinary skill in the art would have considered “multiple MUs to create/maintain a larger database of antenna station fingerprint information, like that suggested by Nanda (Ex-1006, 12:26-29), thus beneficially expanding applications of Spain-I’s disclosed features.” Id. ¶ 188.” slip op. at 27
Patent outcomesUS 8,170,583 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,170,583 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Feb 28, 2025 · PGR2023-00048 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited references do not teach flanges physically contacting along a juncture.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“shaped portion configured to receive the structural component,” “a connection portion,” and “an extension portion,” and that “the extension portion spac[es] the channel-shaped portion from the [connection portion]” and “the channel-shaped portion, the extension portion and the connection portion are rigidly fixed with respect to one another.” Ex. 1001, 12:14–36 (emphases added). Claim 1’s repeated use of “portion[s]” to delineate between the three main elements of the hanger, i.e., channel-shaped portion, connection portion, and extension portion, shows or at least strongly suggests substantial flexibility as to the specific location where one “portion” transitions to another “portion” in the fire wall hanger. Similarly, although claim 1 recites that the “channel-shaped portion” is “configured to receive the structural component,” claim 1 recites no limitation precluding other “portions” of the hanger from also “receiv[ing]” or otherwise contacting the structural component. Patent Owner argues that “channel-shaped portion” should be construed to mean “[the] portion of the hanger that forms a channel configured to receive the structural component.” PO Resp. 19. Petitioner and its expert, Mr. Fennell, agree with this meaning (Pet. Reply 4; Ex. 1046 ¶¶ 16–20), and so do we. Indeed, claim 1 plainly recites this as discussed above. But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find Petitioner’s cited evidence provides sufficient rational reasons to combine Yamaguchi and Bundy to arrive at the invention of claim 1 with a reasonable expectation of success in doing so.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Analysis Patent Owner argues, “[w]hile the asserted prior art does teach flanges or sidewalls that are in opposed relation to each other, none of Adams, Cullen, or Yamaguchi teach that these flanges or sidewalls engage each other along a juncture.” PO Resp. 42–43; see PO Sur-reply 6 (Patent Owner arguing, “Adams’s, Cullen’s, and Yamaguchi’s extension flanges are spaced well apart.”). Petitioner’s arguments to the contrary depend wholly on its proposed interpretation of the term “engaging” (Pet. 58–60; Pet. Reply 30–31), which we reject, as discussed above. Although Yamaguchi (and Cullen and Adams) may teach extension flanges in opposed, face-to-face relation, Petitioner does not explain, let alone with particularity or persuasively, how Yamaguchi’s (or Cullen’s or Adams’) flanges, which would wind up located on opposing sides of a joist (where a joist is mounted in the hanger), also teach such extension flanges engaging each other along a juncture—indeed, what juncture? See PO Sur-reply 7 (“Beyond asserting that the word ‘engaging’—standing alone—does not require ‘touching contact,’ [Petitioner] still does not address how the extension flanges of Yamaguchi, Cullen, and Adams can be said to ‘engage’ each other.”). Based on the foregoing and the complete record before us, we find Petitioner does not sufficiently establish that the combination of Yamaguchi and Bundy teaches or even fairly suggests a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall,” as recited in dependent claims 38 and 91.” slip op. at 70
Patent outcomesUS 11,649,626 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Feb 28, 2025 · PGR2023-00049 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the asserted references did not teach flanges physically touching along a juncture.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18.” slip op. at 20
- Expert testimonyPetitioner expert creditedDecided for petitioner
“artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker, 150 F.3d at 1369. Claims 38 and 91 recite, in relevant part, a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall.” Ex. 1001, 15:28–33, 21:41–46 (emphasis added). On its face, this limitation requires not only that the first and second extension flanges “engage” each other, but also do so “along a juncture.” This recitation of the flanges “engaging” each other along a “juncture” (i.e., a place where things join) strongly supports interpreting the subject limitation to require physical contact (i.e., touching) at least along some portion of the flanges (such as shown in Figure 2, reproduced above). To the contrary, nothing in claims 38 or 91, or their underlying independent claims, suggests that two flanges “engaging each other along a juncture” means or even includes within its scope two flanges “symmetrical to each other across a juncture,” as urged by Petitioner (Pet. 59).” slip op. at 67
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Petitioner persuasively argues, and we agree: There is certainly no requirement that the hanger contain a component “that prevents the back face of the drywall (or any portion thereof) being secured directly to the face of the wall framing” or that the back flange plane “define” or “bound” the space that receives drywall as alleged by Patent Owner. POR [PO Resp.], 25-26. As explained in the Petition and supported by Mr. Fennell’s testimony, Yamaguchi-Bundy’s modified hanger has an extension portion that is long enough to permit two layers of 5/8-inch-thick drywall (i.e., an extending flange having a length over 1 and 1/4 inches) to be received between the channel-shaped portion and the back flange plane. Pet., 28-30, 37; EX1003, ¶96. That is all that is required. EX1046, ¶32. Pet. Reply 12.” slip op. at 38
Patent outcomesUS 11,649,626 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,649,626 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Feb 28, 2025 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited art did not teach flanges physically touching along a juncture.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19. Further, as argued by Petitioner (Pet. Reply 4–5), Patent Owner’s proposed construction limiting “portion” to “all portions” of the hanger that “directly bound the channel that receives the structural component” could cause the “channel-shaped portion” on the same physical hanger to change depending on which type of structural component an installer were to choose to use in construction: Patent Owner’s claim construction improperly focuses on the wall assembly intended to be used with the recited hanger. The claims, however, are directed to a hanger, not a wall assembly. When assessing what part of a hanger constitutes a “channel-shaped portion” and an “extension portion,” [the skilled artisan] would consider the physical features of the hanger itself and the natural divisions between those features. [The skilled artisan] would not assess the claim language and its application to the prior art by speculating how an installer might later install the hanger with a joist or an entire wall assembly, which may differ from installation to installation. Pet. Reply 4 (citing Ex. 1046 ¶ 19). We find this defect further supports a broader interpretation of “channel-shaped portion” as discussed above. Accordingly, based on the complete record before us, we determine” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find” slip op. at 46
- Expert testimonyPetitioner expert creditedDecided for petitioner
“artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40
Patent outcomesUS 11,649,626 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,649,626
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.