• Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, 4–7, and 9–14 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Inoue–Smith obviousness rationale was insufficient.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We do not agree with Petitioner that the fact pattern before us is analogous to Rembrandt. The rationale to combine the teachings of Inoue and Smith provided in the Petition focuses on replacing incandescent bulbs with LEDs, and includes the generic statement that “[t]he numerous record-supported advantages, set forth in Smith provide a clear motivation for use of the teachings of Smith as applied to Inoue, so as to enjoy the advantages set forth in Smith.” Pet. 47. The testimony in Dr. Schubert’s Declaration at pages 99–100 cited in support of Petitioner’s Reply arguments was not cited or otherwise referenced in the Petition. See Pet. 46–55. We find that the Petitioner’s Reply is not responsive to the Institution Decision and is improper because it presents a new rationale to combine the teachings of Inoue and Smith that was not expressed in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Petitioner could have presented its rationale to make out a prima facie case of unpatentability in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Accordingly, we do not consider Petitioner’s new rationale to combine the teachings of Inoue and Smith presented for the first time in the Reply. Based on the entire record, but not including Petitioner’s new rationale and newly cited support to Smith and Dr. Schubert’s testimony (Exs. 1013, 1017) presented for the first time in the Reply, we are not persuaded that Petitioner sets forth in the Petition sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify the circuit of Inoue to include a light source or LED light source with a twinkling or flashing effect in view of Smith’s teachings. See Pet. 46–47, 49–50, 51–53, 55. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of independent claim 9 and dependent claims 3, 5, and 6 would have been obvious over the teachings of Inoue and Smith.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Based on Petitioner’s citations to Holler, Inoue, and Dr. Schubert’s testimony (Ex. 1013), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to “use the resistive value as taught by Holler in the circuit of Inoue to control the illumination of the light sources so that the other illumination devices in the serial light string will not go dark or change illumination if one of the LEDs fails or becomes disconnected.” Pet. 27; see KSR, 550 U.S. at 418. Based on the entire record and including the reasons explained above in Section II.D.2. addressing anticipation of claim 1 by Inoue, we determine Petitioner shows by a preponderance of the evidence that the subject matter of claims 1 and 10 would have been obvious over Inoue and Holler. See Pet. 26–32.” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “We observe that, aside from Declaration testimony of Mr. Altamura and accompanying exhibits, Patent Owner does not offer any additional evidence to establish reduction to practice. An inventor’s testimonial assertion of inventive facts requires corroboration by independent evidence. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). The purpose of the corroboration requirement is to prevent fraud, by providing independent confirmation of the inventor’s testimony. Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997). Without the requirement of independent corroboration, there would be a great temptation to commit perjury and the adverse party would be effectively precluded from a successful rebuttal. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). A rule of reason applies to determining whether the inventor’s testimony has been corroborated. See id. at 1195. “The rule of reason, however, does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). Accordingly, based on the entire record, we find that Mr. Altamura’s Declaration testimony is uncorroborated. Yu is prior art to the ’252 Patent because Patent Owner is unable to establish actual reduction to practice earlier than the July 31, 2006, filing date of Yu.” slip op. at 51

  Patent outcomesUS 11,096,252 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,096,252
• Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01259 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, 4–7, and 9–15 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Petition lacked a sufficient motivation to combine Inoue and Smith.

  RulingsFinal written decision

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

    “We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’794 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 7–9. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation “conducting current at all times across the light sources when current is flowing through the circuit regardless of whether the LED light source are conducting current therethrough,” functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7

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

    “We understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. Neither party disputes our understanding of the term “inherent resistance.” See Dec. on Inst. 9–10; PO Resp. 7–9; Pet. Reply.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 31 ¶ 3; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See PO Resp. 2. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’794 Patent Specification and the asserted prior art.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We do not agree with Patent Owner’s arguments because, as explained above in Section II.A., we decline to import functional language into the claim from the Specification to construe the preamble recitation as requiring the function of “continu[ing] to conduct electricity and keeps the remaining lights lit, even when one more individual lighting elements in the series are out, loose, broken, missing/removed, or defective.” Having considered both parties’ arguments and corresponding cited supporting evidence, we are persuaded that Inoue discloses each of the limitations of claim 1. Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that claim 1 is anticipated by Inoue. See Pet. 25–26.” slip op. at 14

  Patent outcomesUS 11,533,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,533,794
• Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); 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))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16

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

    “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20

  Patent outcomesUS 8,605,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,605,794
• Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12

  Patent outcomesUS 8,378,875 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,378,875
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Fitbit LLC v. Philips North America LLCSome claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00910 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 is not shown unpatentable because the cited grounds do not establish separate data input/output ports.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12

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

    “obviousness challenges, we are not persuaded by Patent Owner’s arguments based on its characterizations of the plain meaning of “security mechanism governing information transmitted between the first personal device and the second device.” The ’233 patent explicitly discloses that the use of passwords or encryption can be used to secure information transmitted between devices. Ex. 1001, 8:12–22, 13:25–67. The use of passwords or security keys certainly provides a form of “governing” of information transmitted between devices. We note that the courts in the Fitbit and Garmin cases have concluded likewise: [Patent Owner’s expert] provides minimal explanation for — and cites to no evidence in support of — his opinion that encryption ‘does not govern or control [the] transmission [of information]’ . . . [and] that opinion appears to conflict with the specification and claims. Ex. 1081, 25. [Patent Owner’s expert’s] conclusory opinion should not be afforded any weight. Ex. 2023, 14. We conclude that it is unnecessary to provide an explicit construction of the phrase at issue, and do not agree with Patent Owner that techniques such as the use of passwords or encryption fall outside of the scope of claim 1.” slip op. at 17

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

    “directional communications module to transition from the powered-down state to the powered-up state.” Ex. 1001, 16:18–20. Petitioner proposes to construe this portion of the claim pursuant to 35 U.S.C. § 112 ¶ 6, including specifying the disclosed structure corresponding to the recited function as “components capable of providing a magnetic, mechanical, sound or ultrasound, infrared, or radio frequency signal, and structural equivalents thereof.” Pet. 21 (citing Ex. 1001, 14:15–60, 16:16–30; Paradiso Decl. ¶¶ 49–50). Petitioner, however, also states that “[t]he ’233 patent explains that the ‘means for signaling’ can be ‘a mechanical signal, such as throwing a switch or applying pressure to a pad.’” Pet. 83; see Ex. 1001, 14:35–36. Therefore, we are not persuaded that Petitioner’s proposed articulation of the corresponding structure is correct. In our Decision to Institute, we stated that it is sufficient for present purposes to note that the disclosed structure that performs the function recited in claim 26 includes a switch that turns the bi-directional communications module on and off. Dec. 12. Patent Owner agrees that such structure is encompassed by the “means for signaling. . .” of claim 26. PO Resp. 12. We reiterate for purposes of this Decision that it is sufficient to note that the disclosed structure includes a switch as described.” slip op. at 18

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

    “includes the claimed short-range bi-directional wireless communications module, and explains that this term is meant to “include premises and facility based wireless networks.” Ex. 1001, 5:57–65. Even though wireless communications modules necessarily have inputs and outputs, we preliminarily concluded, based on these disclosures, that the data input/output ports of claim 14 had to be separate from the “short-range bi-directional wireless communications module” of claim 1 — otherwise the requirement of data input/output ports in claim 14 would be superfluous. Dec. 38–39. See Mformation Techs., Inc. v. Research in Motion Ltd., 764 F.3d 1392, 1399 (Fed. Cir. 2014) (favoring a construction that does not render another limitation “superfluous”). Petitioner points out that there is no example disclosed in the ’233 patent that embodies claim 14 — i.e., no example in which two devices communicate with each other, both using a local area wireless LAW 330 module and a Data I/O port 160. Reply 7. Therefore, argues Petitioner, claim 14 should not be construed to cover subject matter not disclosed in the ’233 patent. Reply 9. However, as both Petitioner and Patent Owner point out, the ’233 patent discloses that both the personal medical device PMD 100 shown in Figure 2 and the medical device interface MDI 600 shown in Figure 4C can include both a wireless communication module 300 and data I/O ports 160, which provides support for claim 14, notwithstanding that the specific connections of components required by claim 14 are not explicitly illustrated. Reply 7–8; Sur-Reply 10–11; Ex. 1001, Fig. 2, 3:47–49, 54–55. Moreover, Petitioner admits that the example of Figure 3A, which uses wireless communication modules 300, “does not include a data I/O port like claim 14.” Reply 8 (emphasis added). This admission contradicts Petitioner’s argument that “wireless communications module” and “data input/output port” are two terms that refer to the same structure. Reply 9 (citing Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings, not that they necessarily refer to two different structures”)). Accordingly, we maintain our preliminary conclusion as expressed in the Institution Decision that the data input/output ports of claim 14 are separate from the “short-range bi-directional wireless communications module[s]” of claim 1.” slip op. at 20

  Patent outcomesUS 7,088,233 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,088,233
• Fitbit LLC v. Philips North America LLCSome claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00783 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1, 7–10, 13, 15, 16, 22, and 24–26 are unpatentable; claim 14 was not shown unpatentable because the references did not disclose separate data input/output ports.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although the respective positions are very similar and our analysis would be the same under either Patent Owner’s or Petitioner’s definition of the ordinarily skilled artisan, from our review of the record, we find Patent Owner’s more specific articulation of the relevant experience is appropriate and consistent with the disclosure of the ’233 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Thus, we adopt Patent Owner’s description.” slip op. at 12

  • Expert testimonyOther

    “From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 42

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

    “From our review of the record, including the testimony of Petitioner’s expert Dr. Paradiso, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combinations of Jacobsen with Quy for Ground 4, Geva for Ground 5, and Reber for Ground 6. For each ground, Petitioner’s reliance on the tertiary references demonstrates that the particular features disclosed (Bluetooth, GPS, and a power button) were well known and readily incorporated into a Jacobson-type system, and that one of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success. Patent Owner’s arguments are unpersuasive, not sufficiently taking into account that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Id. “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Moreover, as Petitioner points out, the fact that an asserted combination introduces “simultaneous advantages and disadvantages [] does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claim 13 would have been obvious over Jacobsen and Quy, that claims 24 and 25 would have been obvious over Jacobsen and Geva, and that claim 26 would have been obvious over Jacobsen and Reber.” slip op. at 42

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Like for Grounds 4–6, we are persuaded that Petitioner has articulated sufficient reasoning with rational underpinning to support the reliance on the combination of Say and Gabai. Although Gabai is directed to an interactive toy, its disclosure relating to bi-directional wireless communications with a base communication unit is pertinent art— satisfying the criterion that “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). Accordingly, we are persuaded that Petitioner has proved by a preponderance of the evidence that claims 15, 16, and 22 would have been obvious over Say and Gabai.” slip op. at 44

  Patent outcomesUS 7,088,233 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,088,233
• Marvell Semiconductor, Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Feb 1, 2021 · IPR2019-01350 · APJ Jameson Lee · IPR · Final written decision

  Claims 3 and 9 are unpatentable as obvious over Shellhammer; claim 8 was not reached on the merits.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteDecided for patent owner

    “Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342, 1353 (Fed. Cir. 2020) (footnote omitted). This is such a situation. We cannot reach a decision on the merits with respect to whether Petitioner has established the unpatentability of claim 8 under any ground of unpatentability asserted by Petitioner, i.e., (1) obvious over Sherman and Trompower, (2) obvious over Shellhammer and Trompower, and (3) obvious over Shellhammer and Panasik.” slip op. at 77

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

    “challenged claims indeed do satisfy the requirements of 35 U.S.C. § 119 with respect to the foreign application the priority of which it claims.5 Cf. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379– 1380 (Fed. Cir. 2015). Dynamic Drinkware stated that because the USPTO does not examine priority claims unless necessary, the Board has no basis to presume that a patent is necessarily entitled to the filing date of its provisional application. Id. at 1380. Under the reasoning of Dynamic Drinkware, the same would be true for a foreign application the priority of which has been claimed. Patent Owner has made no substantive showing in this proceeding of actual entitlement to the filing date of the German Application, by satisfaction of all pertinent requirements of 35 U.S.C. § 119. Accordingly, the effective filing date of the ’676 patent is August 8, 2001, not the earlier filing date of German Application No. 100 39 532.5.” slip op. at 13

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

    “supported by the underlying disclosure of Sherman. Dr. Roy in paragraph 175 of his Declaration (Ex. 1003) cites to column 4, lines 1–8, of Sherman, which states: “The CFP occurs with a regular period, and all 802.11 terminals set their NAV’s during the CFP. To realize such a super frame the following sequence of frames/phases can be used as shown in the graph of FIG. 5.” Ex. 1004, 4:1–5. This disclosure does not indicate, as Dr. Roy concludes, that the control station “relinquish[es]” time to 802.11 CP access if no HIPERLAN/2 transmission requests are pending. Ex. 1003 ¶ 175. We also find unpersuasive Dr. Roy’s testimony that if there is sufficient HIPERLAN/2 traffic, Sherman teaches that the HIPERLAN/2 phase may be extended to very close to the entire superframe. Id. As discussed above, in Sherman, the CFP already is preset, without regard to whether or how many HIPERLAN/2 requests are pending. Ex. 1004, 6:5–6. Dr. Roy’s conclusion is not supported by the disclosure of Sherman and also is not adequately explained.” slip op. at 34

  • PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner

    “III. CONSTITUTIONAL APPOINTMENT Patent Owner argues that Administrative Patent Judges (“APJs”) “are principal officers under the Appointments Clause of the Constitution” “but undisputably are not appointed through the constitutionally-mandated mechanism of appointment for principal officers.” PO Resp. 60. The Federal Circuit, however, addressed this issue and devised a remedy in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, 1325 (Fed. Cir. 2019) cert. granted sub nom. United States v. Arthrex, Inc., 2020 WL 6037206 (Oct. 13, 2020). Patent Owner argues that the remedy devised by the Federal Circuit “impermissibly rewrites the statutes governing APJs.” Id. at 61. We decline to consider the argument because the Arthrex decision states otherwise. See Arthrex, 941 F.3d at 1337 (“This as-applied severance . . . cures the constitutional violation.”).” slip op. at 77

  Patent outcomesUS 7,016,676 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,016,676
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01282 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 6–10, 12–22, 25–30, 46, 47, and 49–53 are unpatentable over the stated grounds; claims 4, 5, 23, 24, and 48 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameters in support of its interpretation that encompasses a single parameter value representing a “pattern.” See Pet. 12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “monitoring and detecting steps in the teachings of Louch. Having reviewed the parties’ arguments and supporting evidence in the complete trial record, we are persuaded Louch teaches the monitoring and detecting steps of claim 1 (as well as related recitations of claims 21 and 46). See Ex. 1011, 8:24–26 (“In some implementations, the process 400 can begin when input from one or more sensors on the mobile device are used to determine a current state of the mobile device ( 410).”), 8:33–35 (“the determining can include detecting and determining two or more different states based on inputs from two or more different sensors”), 8:55–57 (“[t]he states can be determined based on sensor inputs, as described in reference to FIGS. 1-4”); see also Ex. 1021 ¶ 119.” slip op. at 31

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

    “Petitioner argues Louch and Nadkarni are in the same field of endeavor, argues both Louch and Nadkarni are pertinent to the problem addressed by the ’865 patent, and articulates reasons for the proposed combination of Louch and Nadkarni. Pet. 41–45. Patent Owner does not dispute Petitioner’s reasons for combining the references. Having reviewed Petitioner’s arguments (Pet. 41–45), we are persuaded Petitioner has articulated a reason for combining Louch and Nadkarni based on rational underpinnings.” slip op. at 43

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865
• Apple Inc. v. Qualcomm IncorporatedSome claims unpatentable
  PTAB · Feb 24, 2020 · IPR2018-01281 · APJ Daniel N Fishman · IPR · Final written decision

  Claims 1–3, 5, 6, 8–22, 24, 25, 27–30, 46–49, and 51–53 are unpatentable; claims 4 and 23 are not shown unpatentable because Wang does not teach the claimed response between fixing and reduced parameters.

  RulingsFinal written decision

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

    “Second, we agree with Petitioner that Patent Owner’s proffered interpretation, requiring a “pattern” to include relationships between two or more such pairs, incorrectly excludes embodiments where a “pattern” may be identified by the value of only a single parameter. We find nothing in the intrinsic evidence that supports Patent Owner’s narrow interpretation. By contrast, Petitioner identifies support in the ’865 patent Specification referring to a “pattern” being represented by “one or more” values of parameter value representing a “pattern.” See Pet. 11–12 (citing Ex. 1001, 6:49–55, 9:63–67). Furthermore, Petitioner points to deposition testimony of Patent Owner’s expert (Dr. Villasenor) as extrinsic evidence to support the contention that a “pattern” encompasses the value of even a single parameter.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no significant distinction between Dr. Allen’s definition of the level of ordinary skill and that of Patent Owner. In view of Patent Owner’s admission that any differences are not material to the issues we decide here, we discern no reason to depart from our definition of the level 5 Patent Owner does not present arguments or evidence of such secondary considerations in its briefs. Therefore, secondary considerations do not enter into our analysis. Inst. 10. Accordingly, we adopt Dr. Allen’s definition of the level of ordinary skill in the art and determine that a person of ordinary skill in the art at the time of the invention of the ’865 patent would have had a Bachelor of Science degree in either computer science or electrical engineering, together with at least two years of study in an advanced degree program in artificial intelligence, machine learning, or pattern recognition, or comparable work experience.” slip op. at 9

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1).” slip op. at 39

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “illustrated in Wang’s Table 1. In view of these numerous references to the exemplary user states and associated features illustrated in Wang’s Table 1, Patent Owner’s assertion, supported by Dr. Villasenor, that Wang does not use Table 1 to identify states is not credible. Based on Wang’s frequent by Petitioner (Pet. 17, 22–24), we determine that Wang’s implementation uses the states and features illustrated in Table 1 to recognize/identify a pattern as claimed (a particular set of feature values illustrated in Table 1), based on a condition (the corresponding present user state represented in Table 1). It is true that there is no particular algorithm, program code, or data structure that discloses precisely how Table 1 is used. However, the claims do not require any particular data structure, algorithm, or programmed instructions. Claim 1 merely requires that the first pattern be identified “based, at least in part, on said at least one detected condition.” Wang’s frequent reference to the information illustrated in Table 1 and use of that information (feature values) to determine a user state sufficiently teaches the ordinarily skilled artisan the claimed identifying step, as discussed by Dr. Allen. See, e.g., Ex. 1003 ¶¶ 105–107. Accordingly, we find that Wang teaches the identifying step because Table 1 illustrates the exemplary states recognized (identified) by EEMSS along with the patterns (State Features) used to identify the states.” slip op. at 39

  Patent outcomesUS 8,768,865 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Alice · Phillips · KSR · Graham
  Patents in suitUS 8,768,865

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.