• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision

  Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8

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

    “We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7

  Patent outcomesUS 10,524,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,524,002
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].

  RulingsFinal written decision

  • Skill levelOther

    “would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by 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); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16

  Patent outcomesUS 11,140,441 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,140,441
• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2

  • Expert testimonyOther

    “being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25

  Patent outcomesUS 7,436,980 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,436,980
• 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
• Bungie, Inc. v. Worlds Inc.Some claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01268 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 5–7, 10–12, 14, 15, 17, and 19 are unpatentable as anticipated by Funkhouser and Durward; claims 4, 8, 13, and 16 were not shown obvious over Funkhouser and Funkhouser ’93.

  RulingsFinal written decision

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

    “1. Funkhouser’s Status as Prior Art We begin by addressing Funkhouser’s status as prior art to instituted claims 1–8, 10–17, and 19 of the ’690 patent. In this inter partes review, Petitioner has the burden of persuasion to establish unpatentability— including “all issues relating to the status of [Funkhouser] as prior art,” Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576–78 (Fed. Cir. 1996)—by a “preponderance of the evidence,” see 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–79 (Fed. Cir. 2015). This burden of persuasion remains with and never shifts from Petitioner, while the burden of production—the burden of going forward with evidence, which “may entail producing additional evidence and presenting persuasive argument based on new evidence or evidence already of record”—shifts between the parties. Dynamic Drinkware, 800 F.3d at 1378–80 (internal quotations and citation omitted); see Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327–29 (Fed. Cir. 2008); Mahurkar, 79 F.3d at 1576–77. Here, Petitioner argues that Funkhouser qualifies as prior art to claims 1–8, 10–17, and 19 of the ’690 patent under 35 U.S.C. § 102(a). Pet. 4, 13; Reply 17–21. Patent Owner contests Funkhouser’s status as prior art only with respect to claims 1 and 11. Resp. 55–59; see Ex. 2017 ¶ 50.d.xi. Section 102(a) provides, in relevant part, “[a] person shall be entitled to a patent unless . . . the invention was . . . described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent.” 35 U.S.C. § 102(a). In the Petition, Petitioner argues that Funkhouser constitutes prior art under § 102(a), because Funkhouser was published no later than April 12, 1995—before the earliest possible effective filing date of the ’690 patent, the November 13, 1995 filing date of the ’296 provisional. See Pet. 4, 13; Ex. 1001, Cert. of Corr. In Response, Patent Owner does not dispute Petitioner’s position that Funkhouser constituted a printed publication by April 12, 1995. See generally Resp. Patent Owner, however, instead argues that under Petitioner’s proposed interpretation of the determining steps of the ’690 patent claims—with which we have agreed above—the subject matter of claims 1 and 11 of the ’690 patent was invented before Funkhouser’s publication. See id. at 55–59; Ex. 2017 ¶ 50.d.xi. Specifically, Patent Owner contends, with documentary and testimonial evidence proffered in support of its assertions, that (1) the inventors actually reduced to practice the subject matter recited in claims 1 and 11 of the ’690 patent “no later than April 11, 1995,” or alternatively, (2) the inventors “conceived of [the recited subject matter] no later than April 11, 1995 and th[r]ough reasonable diligence, actually reduced them to practice no later than April 25, 1995.” Resp. 55–59. In Reply, Petitioner contests Patent Owner’s proffered arguments and evidence of prior conception and reduction to practice. See Reply 17–21.” slip op. at 54

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

    “relevant field to combine the elements in the way the claimed new invention does.” Id. An obviousness determination “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 93

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “F. REAL PARTY IN INTEREST Patent Owner argues Activision Publishing, Inc. (“Activision”) is an” slip op. at 127

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed

    “specifically Exhibits 1033, 1034, 1037, 1041, and 1042. See generally Mot. We have not relied on four of these exhibits—Exhibits 1033, 1034, 1037, and 1042—in reaching our decision and, therefore, Patent Owner’s arguments as to these exhibits are moot. For Exhibit 1042, in particular, we note that Petitioner does not cite this exhibit in its Petition or its Reply and, thus, has not proffered any argument relying on this exhibit. See id. at 9; Opp. 11; see generally Pet.; Reply. Accordingly, Patent Owner’s Motion to Exclude is dismissed as moot as to Exhibits 1033, 1034, 1037, and 1042.” slip op. at 129

  Patent outcomesUS 7,181,690 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,181,690
• Institut Straumann AG / Dental Wings Inc. v. Sirona Dental Systems GmbHSome claims unpatentable
  PTAB · Nov 15, 2016 · IPR2015-01190 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–8 were held unpatentable as obvious over Bannuscher and Truppe; claims 9–10 were not shown unpatentable; the motion to amend was denied.

  RulingsFinal written decision

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

    “interpretation of the language used in claim 1 and the additional limitations of dependent claims 9 and 10. Patent Owner’s proposed construction also impermissibly reads limitations from the preferred embodiment of Figure 5 into claim 1. Patent Owner would limit the pilot hole location exclusively to a position directly over the implant position and require the drill bit to pass through the pilot hole while drilling a bore hole into the patient’s jaw. The language recited in claim 1, in the context of the ’006 specification, does not so-limit the “determinating a pilot hole” step. First, Patent Owner fails to consider the present participle form “determinating”5 at the beginning of the recited method step at issue. As a result, Patent Owner conflates the recited device production step with a specific process for drilling a bore hole into a patient’s jaw during tooth implant surgery. PO Resp. 14–15. For example, Patent Owner relies on Dr. Erickson’s Declaration testimony (and Dr. Benjamin’s deposition testimony) for the proposition that “pilot hole” is a term of art referring to “an initial hole through which a pilot drill passes during an operation.” Ex. 2002 ¶ 37 (cited at PO Resp. 16–17); see also PO Resp. 16–17 (citing Ex. 2023, 24:3– 22, 25:18–27:2, 52:2–9). The ’006 patent does not describe or reference any such “pilot drill” or “initial hole” being made during a tooth implant operation. Regardless, the claim limitation at issue is a step in a method of producing a drill template. It recites defining a pilot hole in a drill template with reference to the surfaces of neighboring teeth, nothing more. The function of actually passing a drill through a pilot hole in a drill template” slip op. at 11

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

    “Petitioner argues that the term “pseudo-x-ray picture” is not a term that has a commonly understood meaning to a POSA. Pet. 19 (citing Ex. 1002 ¶ 45 [47]). Patent Owner does not comment on the construction of “pseudo-x-ray picture.” PO Resp. 15–19. Having reviewed the complete record, we adopt Petitioner’s argument and evidence in support of Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture.” Therefore, we adopt Petitioner’s proposed broadest reasonable interpretation of “pseudo-x-ray picture” as “any representation of measured data records of the three-dimensional optical measuring that can be superimposed on an x-ray image.” Pet. 19 (citing Ex. 1002 ¶ 49).” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInherency not foundNot shown unpatentable

    “stylus is used to penetrate the surface of the gum repeatedly to measure the structure of the jaw bone displayed in Figure 25. PO Resp. 30–31 (citing Ex. 1007, 24:53–65 (“[S]tylus member 52 is provided with a sharp stylus 574 (FIG. 1) having a length sufficient[ly] long to penetrate gum tissue and contact the bone surface. . . . [P]ractitioner repeats the procedure of piercing the gum tissue in a region about the desired implantation site and taking point data until enough data has been collected . . . to map . . . the entire surface of bone 558 [Fig. 25] about the implantation site.”)). We agree with Patent Owner and find that the use of a sharp stylus to pierce the gum and take multiple data points via contact digitization of the jaw bone beneath the skin surface is not a 3-D optical measuring of the visible surfaces of a patient’s jaw.” slip op. at 21

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

    “would have been motivated to combine their teachings with respect to correlating X-ray imaging data of the jaw and 3-D surface data of the jaw and teeth. Reply 22–23 (citing Ex. 1002 ¶¶ 89, 92; Ex. 1008, 1:10–11 (“precise planning of the surgical operation is necessary”); Ex. 1010, 5:19– 25 (“it is possible to carry out the entire implantological, treatment and operation planning on a scientific basis . . . to implement holistic planning results in a precisely clinical manner”)). More particularly, Bannuscher discloses the desire to obtain “all the necessary [clinical] parameters” relevant to pre-surgical implant planning, which can be “combined together” (“correlated” in the language of claim 1) using planning simulation software, for transfer to a drill template. Ex. 1010, 5:44–6:13, 6:24–40, 7:38–8:4. As Dr. Erickson testified, it would have been desirable for a POSA to have as much diagnostic information as possible when planning for dental implant surgery. Ex. 1029, 31:12–21. Truppe discloses the advantage of correlating three-dimensional X-ray imaging data of the jaw and optical imaging data of the jaw and teeth, using simulation software, to obtain a “vivid” representation. Ex. 1008, 2:7–16, 3:19–28, 3:56–58; 4:1–5. Truppe, therefore, discloses a similar process to that disclosed in Bannuscher with respect to correlating 3-D X-ray imaging data and 3-D optical data representing the surfaces of the jaw and teeth, to generate the best possible representation of the patient’s jaw and teeth. Ex. 1002 ¶¶ 89–92. A POSA would have been motivated to use Truppe’s optical measurement system to generate 3-D surface data of the jaw and teeth for use in Bannuscher’s planning simulation software, in order to produce an enhanced image for determining the optimal bore hole and pilot hole in the drill template. Id.; Ex. 2023, 186:8–187:13 (“the optical imaging [of Truppe] would basically just enhance the diagnostic data [of Bannuscher]”). For example, a POSA would have optically measured the plaster model of the jaw and teeth referenced in Bannuscher and the patient’s actual jaw and teeth, as in Truppe, to produce a “vivid” image for correlation with the X-ray imaging data. Ex. 1002 ¶¶ 89, 92.20 Bannuscher’s determination of the optimized bore hole and corresponding pilot hole in the drill template would be based on the enhanced imagery generated from the correlated 3-D data sets. In short, we are persuaded that a POSA would have had reason to incorporate the teaching of Truppe’s enhanced 3-D optical measurement technique into Bannuscher’s method for correlating 3–D X-ray image and model geometry data sets, to determine an optimal bore hole and corresponding pilot hole in the drill template. For the reasons given above, we are persuaded that Petitioner has established a sufficient motivation for a POSA to combine the relevant teachings of Bannuscher and Truppe, with a reasonable expectation of success, by a preponderance of the evidence.” slip op. at 40

  Patent outcomesUS 6,319,006 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,319,006
• Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.Some claims unpatentable
  PTAB · May 3, 2016 · IPR2015-00083 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1, 3, 4, 9, 11–15, 17, and 20 are unpatentable as anticipated by JPAP ’213; claims 1–20 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237.

  RulingsFinal written decision

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

    “In our Institution Decision, we construed the “translating stage is configured to vertically move the gripper portion” limitation as follows: Claim 1 merely requires a translating stage configured to vertically move the gripper to a position near (“proximate”) one of two locations, a load port and a storage location. The translating stage need not be configured to move the gripper to a location proximate both because the claim uses the phrase “at least one of” those two locations. Dec. on Inst. 12. After further development of the record and consideration of the arguments presented and evidence relied upon by both parties, we determine that the above construction is appropriate with respect to this Final Written Decision. Accordingly, we construe “at least one of [a] and [b]” to mean “at least one of the listed items but not necessarily both.”” slip op. at 15

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

    “construction for the “at least one of” phrase, “there is no anticipation because JPAP ’213 cannot move the gripper proximate to the claimed positions.” PO Resp. 22. This argument is not persuasive because, for the reasons set forth above, the properly construed claims are not as narrow as Patent Owner proposes. See Section II.A. Even were we to conclude that Patent Owner’s proposed construction, where “at least one of” modifies both “[a]” and “[b],” Patent Owner’s arguments are not on point. Claim 1, for example, recites “the translating stage is configured to vertically move the gripper portion . . . to at least one of a second position proximate to a load port [beneath the rail] and a third position proximate to a storage location [disposed lateral to the rail].” There is no dispute that the system of JPAP ’213 is capable of moving to a location proximate a location under the rail. As to the storage location, it is not readily apparent how the above-quoted claim language requires, as Patent Owner argues, a vehicle “capable of moving the gripper/hoist mechanism laterally.” PO Resp. 23; see also Ex. 2016 ¶ 102 (Dr. Bottom’s offering the conclusory opinion that “[A] vehicle capable of moving the gripper to a position proximate to the storage location/conveyer lateral to the overhead rail must be capable of moving the gripper/hoist mechanism laterally.”). A vertically-moving system would be configured to move a gripper proximate (near, next to) an adjacent storage location even if lacking the ability to move laterally so as to place a unit on a storage shelf. Cf. Dec. on Inst. 12 (indicating our understanding of “proximate” as meaning “near”); see, e.g., Ex. 1003, col. 8, ll. 12–16 (“[The overhead hoist transport vehicle is moved along a track, as depicted in step 904, to a position adjacent the selected storage bin.”), and Figs. 3, 5b. Accordingly, we find the system of JPAP ’213 has the capability of moving to a position proximate a laterally disposed storage location as well as a positon beneath the rail. Ex. 1005, 20 (Fig. 1). Based on the argument and evidence presented in the Petition, and the insufficiency of the responsive argument and evidence presented in the Patent Owner Response, as discussed above, we are persuaded that Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 4, 9, 11–15, 17 and 20 are anticipated by JPAP ’213.” slip op. at 19

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

    “paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 162–165. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; see also Mot. Observ. 4–5 (quoting Ex. 2041, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 48–58 (citing Ex. 1028 ¶¶ 57, 157– 196); Reply 12–13 (citing Ex. 1028 ¶¶ 162–65, and 169); Mot. Observ., 2–3 (quoting Ex. 2041, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).10” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “D. Patent Owner’s Motion to Exclude Evidence Patent Owner seeks to exclude Exhibit 1038 and ¶¶ 3–4 of Exhibit 1040 filed by Petitioner with Petitioner’s Reply. Mot. Excl. 1 (Paper 47). Petitioner opposes the motion to exclude. Pet. Excl. Opp. 4–14 (Paper 56). Exhibit 1038 is a confidential product development plan dated September 25, 2002, and produced by Petitioner in this proceeding. Exhibit 1040 is a Second Declaration of Dr. Sturges, and paragraphs 3–4 contain his testimony explaining aspects of the confidential product development plan of Exhibit 1038. Petitioner relies on Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 to rebut Patent Owner’s argument that Petitioner copied Patent Owner’s invention claimed in the ’172 patent. Reply 20, 22, and 25. Patent Owner seeks to exclude Exhibit 1038 and paragraphs 3–4 of Exhibit 1040 as irrelevant (Fed. R. Evid. 401, 402), inadmissible hearsay (Fed. R. 11 In view of our determination, we need not consider Patent Owner’s objective evidence of nonobviousness. See Transocean Offshore Deepwater Drilling, Inc., v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012) (“objective evidence of nonobviousness . . . may be sufficient to disprove or rebut a prima facie case of obviousness”). PO Resp. 46–60; see also Reply 18–25. Evid. 801(c)), and unauthenticated (Fed. R. Evid. 901). Mot. Excl. 1–8. We do not rely on or address Patent Owner’s asserted objective evidence of nonobviousness or Petitioner’s rebuttal evidence in our Decision. Therefore, Patent Owner’s motion to exclude Exhibits 1038 and paragraphs 3–4 of Exhibit 1040 is dismissed as moot.” slip op. at 36

  Patent outcomesUS 8,197,172 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,197,172
• Apple Inc. v. Virnetx Inc.Some claims unpatentable
  PTAB · Aug 24, 2015 · IPR2014-00482 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1, 4, 6, 10, 13–15, 17, 20, 22, 26, 29–31, 33, 35, and 37 are unpatentable; claims 12 and 28 were not shown unpatentable.

  RulingsFinal written decision

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

    “We previously determined that, under a broad but reasonable construction, one of skill in the art would have understood the term “virtual private network communication link,” in light of the Specification, to include “a transmission path between two devices that restricts access to data, addresses, or other information on the path, generally using obfuscation methods to hide information on the path, including, but not limited to, one or more of authentication, encryption, or address hopping.” Dec. on Inst. 6–7. 1 Patent Owner disputes this interpretation and argues that the term “virtual private network communication link” must be “a communication path between computers in a virtual private network” (PO Resp. 8), “requir[es] computers within a VPN to communicate directly” (PO Resp. 10), and requires a “network of computers,” which, according to Patent Owner must be “more than a ‘path between two devices.’” PO Resp. 14. We decline to modify our previous construction of this term in the manner suggested by Patent Owner because such a modification is immaterial in this proceeding for reasons set forth below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claim terms need only be construed to the extent necessary to resolve the case).” slip op. at 3

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

    “understood that a “secure computer network address” must be “associated with a computer capable of virtual private network communications” because a claim recites “sending an access request message to the secure computer network address using a virtual private network communication link.” PO Resp. 16. We agree with Patent Owner that claim 1, for example, recites “sending an access request message to the secure computer network address using a virtual private network communication link.” However, Patent Owner does not explain sufficiently why an explicitly recited claim limitation must be incorporated into the construction of an associated claim term. Indeed, if one of ordinary skill in the art would have understood that all secure computer network addresses must be associated with a computer capable of VPN communications and that any computer network address that is associated with computers that are incapable of VPN communications would be understood by one of ordinary skill in the art not to be a “secure computer network address” (even if authorization for access is required), then any such recited claim limitation would be superfluous. Patent Owner also argues that “VirnetX’s proposed construction has been agreed to by its litigation adversaries and has been adopted by a district court.” PO Resp. 17. Even if Patent Owner’s proposed construction “has been agreed to by” parties in litigation and the district court, Patent Owner does not assert or demonstrate persuasively that one of ordinary skill in the art would have broadly but reasonably construed the term “secure computer network address” in light of the Specification to require association with a computer capable of virtual private network communications. In any event, Patent Owner does not appear to contend that the cited references fail to disclose a secure computer network address that is associated with a computer capable of VPN communications and, therefore, does not demonstrate sufficiently that the construction of “secure computer network address” will bear on the outcome of the issues in this inter partes review. We decline to modify our construction of this term.” slip op. at 5

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “computer network address” of “the server-side proxy” (and not the “host”). PO Resp. 32 (emphasis omitted). In other words, Patent Owner argues that, in contrast to claim 1, which requires sending a query message requesting an address and receiving a response message containing the address requested in the query message, Kiuchi discloses sending a query message requesting an address of “the host” but receiving a response message containing an address of “the server-side proxy,” rather than “the host.” Based on this presumption that “the host” of Kiuchi differs from the “server-side proxy” of Kiuchi, Patent Owner argues that Kiuchi fails to disclose the claimed invention and also that “the Board has exceeded its statutory authority by instituting in part on rationales that were not before it.” PO Resp. 30. However, Patent Owner does not explain sufficiently a difference between “the host” and the “server-side proxy” of Kiuchi. Kiuchi discloses that a client-side proxy “asks the C-HTTP name server whether it can communicate with the host” and that, in response, the C-HTTP name server examines “the requested server-side proxy” and responds by sending the IP address of the server-side proxy. Ex. 1004, 65 (emphasis added). In other words, Kiuchi discloses that “the host” that is requested is the requested “server-side proxy.”” slip op. at 13

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

    “of ordinary skill in the art would have combined Kiuchi with the other references.” PO Resp. 3. Petitioner provides reasons with supporting factual underpinnings to support the conclusion that the combination of Kiuchi and Bhatti (and/or Tavs) would have been obvious to one of ordinary skill in the art. Pet. 34–35, 38–39. For example, Petitioner states that one of ordinary skill in the art would implement Kiuchi’s user agent such that the user agent sends an access request for content stored on the origin server, in the same manner that Bhatti describes sending an access request from a user terminal for content stored [on] a content server. Pet. 38. Petitioner also states that “[i]t would have been obvious to one of ordinary skill at the time of the ’180 patent to modify the client-side proxy and server-side proxy described by Kiuchi to support the service-level categorization and differentiation described by Tavs in order to give priority to business-relevant traffic during peak network congestion.” Pet. 34. Patent Owner does not dispute the reasons provided by Petitioner as to why it would have been obvious to one of ordinary skill in the art to have combined teachings of Kiuchi and Bhatti (and/or Tavs) but argues that this obviousness ground “is critically flawed because the Petition relies solely on missing expert testimony for its rationale for combining” the references. PO Resp. 54, 56. However, Patent Owner does not explain why Petitioner is required to provide expert testimony in support of a proposed ground of unpatentability. Nor does Patent Owner explain the supposed flaws in the rationale provided by Petitioner.” slip op. at 21

  Patent outcomesUS 7,188,180 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,188,180
• Ricoh Americas Corporation / Xerox Corporation v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00302 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–5 and 7–11 are unpatentable because the XNS Manual anticipates them; Petitioner did not show that the XNS Manual or Salgado anticipates claim 6.

  RulingsFinal written decision

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

    “Accordingly, a “software application” is a program, or group of programs, which operate together in a system to perform a function or functions, and the programs can be stored in a variety of places on a variety of devices, and operate in a distributed manner. An application may include software and hardware and performs a function or functions.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner’s arguments are not persuasive. As explained in the Overview section, the application layer itself contains multiple protocols for each application, i.e., mailing, printing, filing, and gateway access. See Ex. 1002, 14–16, Fig. 2-4. Even if lower layer protocols do not “disturb[]” upper layer protocols, as Patent Owner contends, and even if an application layer does not contain multiple protocols (which Patent Owner does not contend), different layers of protocols generally communicate with, or at least “use the resources of,” lower layers through “interfaces.” Id. at 14, 11 (“[A] commonly-accepted perspective is that the functions of one layer use the resources of the lower layers to complete their assigned tasks.”). In any event, the application layer protocols comprise several types of application protocols. Id. at 15 (Fig. 2-4), 16.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “III. MOTION TO EXCLUDE Patent Owner moves to exclude Dr. Melen’s testimony on re-direct during his deposition. Paper 40. We do not consider any of the re-direct testimony, rendering the motion moot. Therefore, we dismiss it.” slip op. at 49

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “Even if Patent Owner’s assertions raise doubt as to Dr. Melen’s use of the XNS Manual to support his opinion that it anticipates claim 6, see id. at 9–12, Patent Owner does not show how this translates to undermining Dr. Melen’s opinion regarding the other claims. Throughout his analysis of the XNS Manual, Dr. Melen’s declaration provides specific and accurate citations to the XNS Manual (Ex. 1002), supporting his opinion and showing that he relies on the XNS Manual’s disclosure. See Ex. 1008 ¶¶ 29–47. In addition, because Petitioner has not shown that the XNS Manual or Salgado anticipates claim 6, Dr. Melen’s opinion about claim 6 is not of significant consequence. In reciprocal fashion, Petitioner maintains that “the Board should give no weight to Mr. Weadock’s Declaration.” Pet. Reply 7–8. Mr. Weadock’s testimony is not necessary to reach our decision with regard to claim 6, and we did not consider it in reaching the decision about claim 6. Given the finding of anticipation of claims 1–5 and 7–11, the issue is moot. Nevertheless, as this Final Decision implies, we afforded Mr. Weadock’s declaration and Dr. Melen’s declaration due weight in reaching the finding that the XNS Manual anticipates claims 1–5 and 7–11.” slip op. at 50

  Patent outcomesUS 7,986,426 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 7,986,426
• Hewlett-Packard Co. v. MPHJ Technology Investments, LLCSome claims unpatentable
  PTAB · Nov 19, 2014 · IPR2013-00309 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–12, 14, and 15 are unpatentable as anticipated by Cotte; Petitioner did not show claim 13 unpatentable over Cotte or SJ5.

  RulingsFinal written decision

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

    “In our Institution Decision, we interpreted phrases of the type “at least one of A and B” and “at least A and B” in the alternative, i.e., “one or more A or B.” Dec. on Inst. 11. The parties do not challenge this interpretation. Patent Owner agreed with it during the oral hearing, stating that “as Petitioner stated, these are alternative claim elements. Patent Owner takes no issue with that interpretation, that either - - that claim element 1.3 [at least one input module] and 1.4 [at least one module communicable] are claimed in the alternative.” Tr. 31:6–9 (see supra claim 1). Patent Owner’s declarant, Mr. Weadock, also agrees with this general construction outlined in the Petition. See Ex. 2002 ¶ 17.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The record shows that Mr. Wibbels possesses “at least . . . ‘ordinary skill in the art’” (Ex. 1005 ¶ 20): the level of ordinary skill in the art of the ’381 [Patent] at the time of the effective filing date is a person with a bachelor of science degree and two years experience in research or development (e.g., engineering, product development, requirements analysis) in fields or industries pertinent to the art (e.g., digital imaging systems, such as scanners or printers). With more education, for example post-graduate degrees and/or study, less industry experience is needed to attain an ordinary level of skill. Id. ¶ 19. The claims of the ’381 Patent generally recite systems for processing and transmitting electronic images with “counterparts” in conventional printing systems. The ’381 Patent Specification also summarizes the disclosed invention as involving C-level software. See Ex. 1001, col. 3, ll. 35–67. Firmware skill, contrary to Patent Owner’s arguments, skill in creating computer algorithms, and other languages, including C-level, represent relevant skill. Mr. Weadock testifies that the requisite level of skill incudes experience in “printing, networking, scanning, and e-mail.” Ex. 2002 ¶ 15. Patent Owner acknowledges that Mr. Wibbels had “formal education” in software languages including C-level. PO Resp. 10. The record, including the prior art, which is directed to similar systems as the claimed invention, show that Mr. Wibbels has the requisite engineering education, and experience at least in imaging art, encompassing printer, scanning, and networking––“digital imaging systems.” Ex. 1005 ¶ 19. Mr. Wibbels invented systems as specified in several relevant patents generally involving computer based imaging. See Ex. 1012, 1–2. Patent Owner has not demonstrated through cross-examination or otherwise that Mr. Wibbels’s testimony is unreliable. Mr. Wibbels qualifies to aid in the Board’s understanding and his opinion is entitled to due weight.” slip op. at 23

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Patent Owner’s assertions bolster the record evidence and show that Mr. Wibbels has experience and education in software. Patent Owner does not qualify “high level” software. Patent Owner had the opportunity to challenge the declaration of Mr. Wibbels through cross-examination and competing testimony. See In re TMI Litig., 193 F.3d 613, 692 (3d Cir. 1999) (“So long as the expert’s testimony rests upon ‘good grounds,’ it should be tested by the adversary process—competing expert testimony and active cross-examination.” (quoting Ruiz-Troche v. Pepsi Cola of P. R. Bottling Co., 161 F.3d 77, 85 (1st Cir.1998))). In addition to having a Master’s degree in engineering, Mr. Wibbels has been a “Distinguished Technologist/Strategist” at Hewlett Packard Company since 2004. Mr. Wibbels is “an inventor of 17 issued U.S. Patents” and has “spent approximately 20 years working on product development of HP scanning and printing solutions.” Ex. 1012, 1–2; Ex. 1005, 2.” slip op. at 22

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “claim 13. In its Reply, Petitioner contends that “[c]laim 13 . . . only references other modules in a manner that lacks antecedent basis.” Pet. Reply 7. Claim 13 references “said . . . modules,” however, Petitioner’s explanation falls short of explaining how a list of modules cannot be afforded patentable weight. In its Petition, Petitioner asserts that Cotte discloses a list of menu options “used at startup of a copier.” Pet. 46 (citing Ex. 1011, col. 15, ll. 36–42, col. 18, ll. 43–51, col. 22, ll. 53–61, col. 23, ll. 19–25; Ex. 1005 ¶ 308). Nevertheless, Petitioner does not point out the specific list or show it is read on start-up. For example, the menu cited at column 15, lines 36–42, appears to be generated in response to an interrupt from the input device. See Ex. 1011, col. 15, ll. 30–32. Mr. Wibbels appears to rely on inherency “in a Windows implementation,” Ex. 1005 ¶ 308, but Petitioner does not provide a citation or persuasive evidence that shows that Cotte employs a Windows implementation. See PO Resp. 31. On this record, Petitioner does not show how Cotte discloses the claimed list of modules, or the list read on start-up. Petitioner thus does not show by a preponderance of evidence that Cotte anticipates claim 13.” slip op. at 45

  Patent outcomesUS 6,771,381 mixed
  Claim construction§ 102 anticipation
  Patents in suitUS 6,771,381

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.