• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

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

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

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

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

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

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Zillow Group, Inc. / Zillow, Inc. v. International Business Machines Corp.No claims unpatentable
  PTAB · Mar 3, 2022 · IPR2020-01656 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–5 and 7–10 were not shown unpatentable because Reuning did not disclose the ordered selection and assignment steps required by claim 1.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a skilled artisan “would have had a bachelor’s degree in computer science or a closely related field, along with two or more years of programming experience in application development, including familiarity with accessing databases and implementing user interfaces, as well as familiarity with marketing concepts and marketing workflows.” Pet. 7–8 (citing Ex. 1004 ¶ 22). Patent Owner contends a skilled artisan “would have had a degree in computer science, information systems, or a similar discipline, or equivalent work experience.” PO Resp. 2. In addition to the educational attainment, Patent Owner contends a skilled artisan would have had “one to two years of work experience implementing networked systems with user interfaces, including familiarity with databases and computerized marketing.” Id. (citing Ex. 2004 ¶ 46). Patent Owner acknowledges that Petitioner offers “a slightly different level of ordinary skill in the art” but that “it is not materially different.” Id. at 2–3. For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it appears consistent with the problems addressed in the ’904 patent and the prior art of record. Our Decision, however, would not be impacted if we adopted Patent Owner’s proposed level of skill in the art.” slip op. at 7

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

    “Our decision in this case does not turn on whether or not a promotion instance is limited to one used in a marketing campaign or whether a list of contacts constitutes a promotion instance or whether the preamble is limiting. The parties also do not dispute that the cited prior art discloses promotion instances. Thus, we need not reach these issues. Consequently, we need not formally construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “Patent Owner next contends that “promotion list” should be construed as “a collection of one or more promotion instances” but the term “does not apply to a collection of contact information.” PO Resp. 3–4 (citing Ex. 2004 ¶¶ 50–51). Petitioner, in turn, contends Patent Owner “fails to explain why the word ‘collection’ should replace ‘list’ or how ‘a collection’ clarifies the plain and ordinary meaning of ‘list.’” Pet. Reply 1–2. Petitioner further contends, based on deposition testimony by Dr. Shamos, that Patent Owner “imposes intent––‘an express act of making a list’––into ‘promotion list.’” Id. at 2 (citing Ex. 1020, 70:10–71:3). Patent Owner denies “there is an element of intent in the claims of the ’904 Patent.” Sur-Reply 9. We apply the plain and ordinary meaning of “promotion list” as “a list of one or more promotion instances.” We note that our Decision would be the same even if we adopted Patent Owner’s construction, i.e., “a collection of one or more promotion instances.”” slip op. at 9

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

    “Owner Response that steps 1[c] through 1[h] must be performed in order. PO Resp. 4. Patent Owner provides a step-by-step analysis showing that the language of claim 1 shows that “step 1f . . . refers back to step 1e,” “step 1e . . . refers back to step 1d,” and “step 1d . . . refers back to step 1c.” Id. at 5–6 (emphasis omitted). Petitioner’s basis for its contention that the steps do not have to be performed in order is Mr. Hochman’s testimony concerning prefetching and indexing. Pet. Reply 4–7. As discussed above in connection with step 1[d], we find this testimony by Mr. Hochman to be entitled to no weight because it is entirely unsupported. We also note that Mr. Hochman’s credibility in regard to his testimony that the steps of claim 1 are not required to be performed in order is further undercut by his testimony that he is not familiar with the “the term ‘antecedent basis’ in patent law.” Ex. 2003, 52:22–24. For all of these reasons, we agree with Patent Owner that the plain language of claim 1, including the antecedent basis recited in steps 1[c] to 1[h] requires the steps to be performed in order.” slip op. at 32

  Patent outcomesUS 8,315,904 not shown unpatentable
  Claim construction§ 102 anticipation
  Patents in suitUS 8,315,904
• Microsoft Corporation v. Biscotti Inc.No claims unpatentable
  PTAB · Mar 17, 2016 · IPR2014-01459 · APJ Neil T Powell · IPR · Final written decision

  Claims 69–71 and 74 were not shown unpatentable because Kenoyer did not disclose the claimed set-top-box audiovisual input in the same arrangement.

  RulingsFinal written decision

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

    “To demonstrate anticipation, Petitioner must demonstrate that a prior art reference shows every element of the claimed invention identically, in the same relationship as in the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (1962)). “[I]t is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Kenoyer supports the conclusion that Petitioner is relying on separate embodiments. Kenoyer discloses that Figure 5 shows “an embodiment” of a codec and that Figures 7a and 7b also show “an embodiment” of an MCVCS with codec functionality incorporated in a set-top box. Ex. 1006, col. 2, ll. 47–48, 51–52, col. 8, ll. 56–57. This indicates that Kenoyer discloses one embodiment in Figure 5 and a different embodiment in Figures 7a and 7b. Kenoyer’s pass-through passage is discussed in connection with the embodiment of Figs. 7a and 7b, not the embodiment of Figure 5. Ex. 1006, col. 10, ll. 8–36. Thus, Dr. Houh’s testimony that a person of ordinary skill would treat all these teachings together contradicts Kenoyer’s disclosure that these are separate embodiments and is entitled to little weight. See Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (“[E]xpert testimony at odds with the intrinsic evidence must be disregarded.”).” slip op. at 22

  • ExcludeMotion to exclude, grantedOther

    “III. PATENT OWNER’S MOTION TO EXCLUDE We have reviewed Patent Owner’s Motion to Exclude Evidence (Paper 41), Petitioner’s Response to the Motion (Paper 42), and Patent Owner’s Reply in support of the Motion (Paper 45). Patent Owner moves to exclude Exhibits 1005, 1007–1009, 1016–1024, 1026, 1028–1033, 1037– 1040, 1042, 1043, 1054, and 1056–1061. Because our decision does not rely on any of the challenged exhibits, we dismiss Patent Owner’s Motion to Exclude Evidence as moot.” slip op. at 26

  Patent outcomesUS 8,144,182 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,144,182
• Microsoft Corporation v. Biscotti Inc.No claims unpatentable
  PTAB · Mar 17, 2016 · IPR2014-01458 · APJ Neil T Powell · IPR · Final written decision

  Petitioner did not prove claims 6, 7, 12, 17–23, 38, 39, 41, 42, 44, 45, 50, 52, and 53 unpatentable because Kenoyer did not disclose the claimed storage medium and instructions as arranged.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “For the reasons explained by Patent Owner and Dr. Bovik, Kenoyer’s program-instructions sentence does not make sense as referring to everything in the preceding 34 pages of Kenoyer. See PO Resp. 26–29; Ex. 2006 ¶¶ 96–99. Thus, Petitioner’s and Dr. Houh’s observations that the program-instructions sentence appears near the end of Kenoyer and refers to “all . . . of the above” do not persuade us that the program-instructions sentence refers to the preceding 34 pages. Pet. Reply 5; Ex. 1052 ¶ 53. Nor are we persuaded by Petitioner’s argument that column 15, lines 1–20 discloses objects, such as a camera and a microphone that could not be implemented in program instructions. This argument does not make it any more likely that the program-instructions sentence refers to all of the preceding 34 pages than that it refers to the disclosure at column 15, lines 1– 20.” slip op. at 22

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

    “art reference shows every element of the claimed invention identically, in the same relationship as in the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). The invention must have been known to the art in the detail of the claim; that is, all of the elements and limitations of the claim must be shown in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (second alteration in original) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)). “[I]t is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (citing In re Arkley, 455 F.2d 586, 587 (CCPA 1972)).” slip op. at 21

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

    “C. Obviousness of Claim 22 over Kenoyer and the Internet Protocol Claim 22 depends from claim 6. Accordingly, claim 22 includes claim 6’s “storage medium” and its four “instructions for” performing certain functions. As noted above in Section II.B.2, Petitioner asserts that Kenoyer discloses these limitations, but Petitioner has not demonstrated by a preponderance of the evidence that Kenoyer does disclose these limitations as arranged in the claim. In the portion of the Petition that explains Petitioner’s assertion that claim 22 would have been obvious over Kenoyer and the Internet Protocol, Petitioner does not provide evidence or argument overcoming the shortcomings in Petitioner’s assertion that Kenoyer discloses the “storage medium” and the four “instructions for” performing functions. Pet. 36. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 22 would have been obvious over Kenoyer and the Internet Protocol. D. Obviousness of Claim 39 over Kenoyer and Asmussen Claim 39 depends indirectly from claim 6. Accordingly, claim 39 includes claim 6’s “storage medium” and its four “instructions for” performing certain functions. As noted above in Section II.B.2, Petitioner asserts that Kenoyer discloses these limitations, but Petitioner has not demonstrated by a preponderance of the evidence that Kenoyer does disclose these limitations as arranged in the claim. In the portion of the Petition that explains Petitioner’s assertion that claim 39 would have been obvious over Kenoyer and Asmussen, Petitioner does not provide evidence or argument overcoming the shortcomings in Petitioner’s assertion that Kenoyer discloses the “storage medium” and the four “instructions for” performing functions. Pet. 36–40. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 39 would have been obvious over Kenoyer and Asmussen.” slip op. at 27

  • ExcludeNot reached

    “III. PETITIONER’S MOTION TO EXCLUDE We have reviewed Petitioner’s Motion to Exclude (Paper 33), Patent Owner’s Opposition to the Motion (Papers 41, 42)3, and Petitioner’s Reply in support of the Motion (Paper 45). Petitioner moves to exclude Exhibits 2015–2034. Because our decision does not rely on any of the challenged exhibits, we dismiss Petitioner’s Motion to Exclude as moot. IV. PATENT OWNER’S MOTION TO EXCLUDE We have reviewed Patent Owner’s Motion to Exclude Evidence (Paper 37), Petitioner’s Response to the Motion (Paper 38), and Patent Owner’s Reply in support of the Motion (Paper 46). Patent Owner moves to exclude Exhibits 1005, 1007, 1009, 1016–1022, 1026, 1028–1033, 1037– 1043, 1054, and 1058–1061. Because our decision does not rely on any of 3 Paper 41 is a confidential version of Patent Owner’s Opposition, which Patent Owner filed under seal. Paper 42 is a redacted version of Patent Owner’s Opposition. the challenged exhibits, we dismiss Patent Owner’s Motion to Exclude Evidence as moot.” slip op. at 29

  Patent outcomesUS 8,144,182 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,144,182
• Microsoft Corporation v. Biscotti Inc.No claims unpatentable
  PTAB · Mar 17, 2016 · IPR2014-01457 · APJ Neil T Powell · IPR · Final written decision

  The Board held claims 6, 24–26, 28, 29, 31, 36, 37, and 41 not shown unpatentable because Kenoyer did not disclose claim 6’s storage medium and four instructions as arranged in the claims.

  RulingsFinal written decision

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

    “To demonstrate anticipation, Petitioner must demonstrate that a prior art reference shows every element of the claimed invention identically, in the same relationship as in the claim. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). The invention must have been known to the art in the detail of the claim; that is, all of the elements and limitations of the claim must be shown in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “[A reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (second alteration in original) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 20

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

    “includes claim 6’s “storage medium” and its four “instructions for” performing certain functions. As noted above in Section II.B.2, Petitioner asserts that Kenoyer discloses these limitations, but Petitioner has not demonstrated by a preponderance of the evidence that Kenoyer does disclose these limitations as arranged in the claim. In the portion of the Petition that explains Petitioner’s assertion that claim 36 would have been obvious over Kenoyer and Briere & Hurley, Petitioner does not address claim 6’s “storage medium” and the four “instructions for” performing functions. Pet. 53–55. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 36 would have been obvious over Kenoyer and Briere & Hurley. D. Obviousness of Claim 37 over Kenoyer Claim 37 depends indirectly from claim 6. Accordingly, claim 37 includes claim 6’s “storage medium” and its four “instructions for” performing certain functions. As noted above in Section II.B.2, Petitioner asserts that Kenoyer discloses these limitations, but Petitioner has not demonstrated by a preponderance of the evidence that Kenoyer does disclose these limitations as arranged in the claims. In the portion of the Petition that explains Petitioner’s assertion that claim 37 would have been obvious over Kenoyer, Petitioner does not address claim 6’s “storage medium” and the four “instructions for” performing functions. Id. at 55–56. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 37 would have been obvious over Kenoyer.” slip op. at 26

  • ExcludeMotion to exclude, deniedOther

    “Owner’s Opposition to the Motion (Papers 50, 51)4, and Petitioner’s Reply in support of the Motion (Paper 54). Petitioner moves to exclude Exhibits 2020–2039. Because our decision does not rely on any of the challenged exhibits, we dismiss Petitioner’s Motion to Exclude as moot.” slip op. at 28

  • Skill levelNot reached

  Patent outcomesUS 8,144,182 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,144,182
• Gsi Technology, Inc. v. Cypress Semiconductor CorporationNo claims unpatentable
  PTAB · Apr 9, 2015 · IPR2014-00121 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–7, 12, 13, 15–17, 19, and 20 were not shown unpatentable because the cited references did not establish the claimed limitations as arranged or combined.

  RulingsFinal written decision

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

    “address latch 12 in Figure 1 may include the circuitry shown in Figure 3. Pet. 15 (citing Ex. 1002, Fig. 3, col. 4, ll. 22–26; Ex. 1011 ¶ 29). Yet we do not agree that Sharp’s disclosure regarding the use of the circuit of Figure 3 as address latch 12 is clear on its face or unambiguous. The cited portion of Sharp actually states that “[i]n Fig. 3 a circuit is illustrated which may be used for latches or other logic circuits. The memory of Fig. 1 may be realized without this circuit and conversely, the circuit may be used in other than the memory of Fig. 1.” Ex. 1002, col. 4, ll. 22–26. At best, this statement suggests that the circuit of Figure 3 could be used somewhere in the memory of Figure 1. The statement also could be read as saying that Figure 3 represents an independent disclosure, and that a skilled artisan could modify the circuit of Figure 3 to create the memory of Figure 1. Indeed, the statement establishes that the memory of Figure 1 does not need to use the circuitry of Figure 3. Id. The Petition points us to nothing in Sharp that expressly discloses, nor does the Petition provide an analysis as to why a skilled artisan would understand, that Figure 3 is used as address latch 12, or even could be used as address latch 12—without modification—as Petitioner contends. See Pet. 14–21. The only other evidence that Petitioner cites on this point in its Petition, the Murphy Declaration (Ex. 1011), is not persuasive because the Murphy Declaration contains the same conclusory statement as the Petition, and cites the same statement from Sharp without any additional analysis or explanation. See Ex. 1011 ¶ 29. But as we explained above, these statements are insufficient, and are no more persuasive coming from an expert witness, rather than the Petition, without some additional reasoning and explanation. See Perreira v. Dep’t of Health and Human Serv., 33 F.3d 1375, 1377 n.6 (Fed. Cir. 1994) (“An expert opinion is no better than the soundness of the reasons supporting it.”).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “This testimony and its conclusion could be significant, but only if we assume that Figure 3 must be capable of being used, without modification, somewhere in Figure 1. Mr. Murphy appears to start with that assumption and then eliminates possible candidate structures in Figure 1 until only one is left. Id. ¶¶ 19–20. Mr. Murphy does not provide a reason why a person of ordinary skill would understand Sharp as disclosing the use of Figure 3, without any modifications, in Figure 1, so we are left to speculate on this critical connection between Sharp’s explicit disclosure and Petitioner’s contentions. This conspicuous gap in the provided analysis undermines the persuasive weight of his testimony. We also find Mr. Murphy’s testimony unpersuasive because the testimony is inconsistent with the disclosure of Sharp. If Petitioner’s contention were correct, then Figure 3 can be used only as address latch 12. Sharp, however, does not describe Figure 3 to be as limited as Petitioner argues, and, instead, states that Figure 3 shows circuitry “which may be used for latches or other logic circuits.” Ex. 1002, col. 4, ll. 22–26. Thus, we find Mr. Murphy’s new testimony that Figure 3 can be used only as address latch 12 to be inconsistent with the open-ended description in Sharp. Without an explanation that reconciles Sharp’s description of Figure 3 with Mr. Murphy’s new analysis, we are persuaded that Mr. Murphy’s testimony is entitled to little or no weight. See Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (“[E]xpert testimony at odds with the intrinsic evidence must be disregarded.”).” slip op. at 14

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

    “E. Remaining Grounds We also instituted trial on several obviousness grounds based on Sharp or Takayangi, including (1) that claim 7 was unpatentable as obvious over the combination of Sharp and Chappell, (2) that claim 12 was unpatentable as obvious over the combination of Sharp and Lee, (3) that claim 13 was unpatentable as obvious over the combination of Sharp, Takayanagi, and Proebsting, and (4) that claim 17 was unpatentable as obvious over the combination of Sharp and Suzuki. Petitioner offers no reasoning or rationale to justify using Figure 3 of Sharp as address latch 12 or PCex to control the latches of Takayanagi based on an obviousness analysis. Instead, Petitioner relies on the same analysis of Sharp and Takayanagi that we have found unpersuasive, as discussed above. Pet. 22– 28, 38–40. Petitioner does not contend that Chappell, Lee, Proebsting, or Suzuki would compensate for any of the deficiencies we have identified in Sharp and Takayanagi. Accordingly, we find that Petitioner also has failed to show, by a preponderance of the evidence, that claims 7, 12, 13, or 17 are unpatentable under 35 U.S.C. § 103(a) based on the combinations identified above.” slip op. at 23

  Patent outcomesUS 6,292,403 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,292,403
• Gsi Technology, Inc. v. Cypress Semiconductor CorporationNo claims unpatentable
  PTAB · Apr 9, 2015 · IPR2014-00202 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–4, 13–15, and 17–20 were not shown unpatentable because the cited references did not establish the claimed arrangements or address storage limitations.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Taking Patent Owner’s evidence and weighing it against the evidence Petitioner has offered that Figure 3 is, without modification, the address latch of Figure 1, we find that Petitioner has failed to show that Sharp unambiguously discloses such a circuit. In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Instead, we conclude that Petitioner picks and chooses among the components disclosed in Sharp to assemble the claimed subject matter. This cannot establish anticipation. See Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984) (“The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’”). Even if a skilled artisan would have been able to modify the circuit of Figure 1 of Sharp and its timing such that the circuit of Figure 3 could be used as address latch 12, our reviewing court has held that “differences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc., 545 F.3d at 1371. Here, Petitioner has failed to establish by a preponderance of the evidence that Sharp unambiguously discloses the use of the circuit of Figure 3 as address latch 12 in Figure 1, without requiring modification of the circuit. Thus, we find that Petitioner has failed to show that Sharp anticipates claims 1–4, 13, and 18. See Arkley, 455 F.2d at 587 (“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed subject matter is identically disclosed or described in the prior art.”).” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “assume that Figure 3 must be capable of being used, without modification, somewhere in Figure 1. Mr. Murphy appears to start with that assumption and then eliminates possible candidate structures in Figure 1 until only one is left. Id. ¶¶ 19–20. Mr. Murphy does not provide a reason why a person of ordinary skill would understand Sharp as disclosing the use of Figure 3, without any modifications, in Figure 1, so we are left to speculate on this critical connection between Sharp’s explicit disclosure and Petitioner’s contentions. This conspicuous gap in the provided analysis undermines the persuasive weight of his testimony. We also find Mr. Murphy’s testimony unpersuasive because the testimony is inconsistent with the disclosure of Sharp. If Petitioner’s contention were correct, then Figure 3 can be used only as address latch 12. Sharp, however, does not describe Figure 3 to be as limited as Petitioner argues, and, instead, states that Figure 3 shows circuitry “which may be used for latches or other logic circuits.” Ex. 1002, col. 4, ll. 22–26. Thus, we find Mr. Murphy’s new testimony that Figure 3 can be used only as address latch 12 to be inconsistent with the open-ended description in Sharp. Without an explanation that reconciles Sharp’s description of Figure 3 with Mr. Murphy’s new analysis, we are persuaded that Mr. Murphy’s testimony is entitled to little or no weight. See Network Commerce, Inc. v. Microsoft Corp., 422 F.3d 1353, 1361 (Fed. Cir. 2005) (“[E]xpert testimony at odds with the intrinsic evidence must be disregarded.”).” slip op. at 13

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

    “Taking Patent Owner’s evidence and weighing it against the evidence Petitioner has offered that Figure 3 is, without modification, the address latch of Figure 1, we find that Petitioner has failed to show that Sharp unambiguously discloses such a circuit. In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“[T]he [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.”). Instead, we conclude that Petitioner picks and chooses among the components disclosed in Sharp to assemble the claimed subject matter. This cannot establish anticipation. See Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984) (“The requirement that the prior art elements themselves be ‘arranged as in the claim’ means that claims cannot be ‘treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.’”). Even if a skilled artisan would have been able to modify the circuit of Figure 1 of Sharp and its timing such that the circuit of Figure 3 could be used as address latch 12, our reviewing court has held that “differences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc., 545 F.3d at 1371. Here, Petitioner has failed to establish by a preponderance of the evidence that Sharp unambiguously discloses the use of the circuit of Figure 3 as address latch 12 in Figure 1, without requiring modification of the circuit. Thus, we find that Petitioner has failed to show that Sharp anticipates claims 1–4, 13, and 18. See Arkley, 455 F.2d at 587 (“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed subject matter is identically disclosed or described in the prior art.”).” slip op. at 16

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

    “E. Remaining Grounds We also instituted trial on several obviousness grounds based on Sharp or Takayangi, including (1) that claim 14 was unpatentable as obvious over the combination of Sharp and Lee, (2) that claim 15 was unpatentable as obvious over the combination of Sharp, Takayanagi, and Proebsting, and (3) that claim 19 was unpatentable as obvious over the combination of Sharp and Suzuki. Petitioner offers no reasoning or rationale to justify using Figure 3 of Sharp as address latch 12 or PCex to control the latches of Takayanagi based on an obviousness analysis. Instead, Petitioner relies on the same analysis of Sharp and Takayanagi that we have found unpersuasive, as discussed above. Pet. 19–28, 37–39. Petitioner does not contend that Lee, Proebsting, or Suzuki would compensate for any of the deficiencies we have identified in Sharp and Takayanagi. Accordingly, we find that Petitioner also has failed to show, by a preponderance of the evidence, that claims 14, 15, or 19 are unpatentable under 35 U.S.C. § 103(a) based on the combinations identified above.” slip op. at 23

  Patent outcomesUS 6,069,839 not shown unpatentable
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 6,069,839

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.