- Medivis, Inc. v. Novarad Corp.Some claims unpatentablePTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand
Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.
RulingsRemand decision- RemandOther
“Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22
Patent outcomesUS 11,004,271 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,004,271 - Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentablePTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
Patent outcomesUS 8,291,243 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - Medivis, Inc. v. Novarad Corp.Rehearing deniedPTAB · Apr 23, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Rehearing
The Board denied Medivis’s rehearing request, leaving in place the decision that claims 1–6 and 11–20 were not shown unpatentable because the cited references’ public accessibility was not established.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, except the references Chen, 3D Visualization, and 3D Slicer themselves. This is insufficient and tantamount to submitting no proof of public accessibility. To find public accessibility, we must determine that a “document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), quoted in Dec. 26–27. Petitioner has insufficiently explained, by a preponderance of the evidence, how Chen, 3D Visualization, and 3D Slicer themselves answer the question of whether they have been disseminated or otherwise made available to those of ordinary skill in the art. Thus, we did not overlook or misapprehend any evidence of public accessibility on pages 29–30 of the Petition.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“declaration by reference, we exercised our discretion to address a portion of it in our Decision. Dec. 30–31. We did so because we noted that his testimony was “particularly deficient for [the 3D Slicer] reference.” Id. at 30. Petitioner now asserts that in doing so, we “misapprehended or overlooked the logic that application documentation” like 3D Slicer’s “must be accessible to potential application users because it serves to help users use the application.” Req. 7. But Petitioner’s assertion that “application documentation must be accessible to potential application users because it serves to help users use the application” is a new argument, not raised in the Petition or Reply. Even if Petitioner’s assertion were correct, it falls far short of the evidence required to prove that 3D Slicer was actually disseminated to interested members of the public. See, e.g., Weber, 92 F.4th at 1068. Thus, Petitioner’s argument fails to persuade us that we overlooked or misapprehended anything.” slip op. at 11
§ 102 anticipationPatents in suitUS 11,004,271 - Medivis, Inc. v. Novarad Corp.Some claims unpatentablePTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.
RulingsFinal written decision- Skill levelOther
“A. Level of Ordinary Skill in the Art” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53
Patent outcomesUS 10,945,807 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,945,807 - Medivis, Inc. v. Novarad Corp.No claims unpatentablePTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: a bachelor’s degree in computer science, electrical engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The U.S. Supreme Court has emphasized that “rejections on obviousness grounds 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.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23
Patent outcomesUS 11,004,271 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,004,271 - LG Electronics, Inc. v. Constellation Designs, LLCInstitution deniedPTAB · Jul 18, 2023 · IPR2023-00320 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6–7, 16–17, or 27–28 were unpatentable; disclaimed claims were excluded.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77. For these reasons, we determine that Petitioner has not shown that claims 6, 16, and 27 lack written description support in Barsoum. Petitioner does not assert that claims 7, 17, and 28 lack written description support in Barsoum for any reason separate than provided by its assertions against parent claims 6, 16, and 27. Therefore, Petitioner has not shown a lack of written description in claims 7, 17, and 28.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“unequally spaced symbol constellations to a second group of unequally space[d] symbol constellations when the two groups are operated at the same SNR.” Pet. 15 (emphasis omitted). Petitioner argues that Barsoum “only describes determining a relative relationship between a geometrically shaped (i.e., unequally spaced) constellation and a constellation optimized for dmin.” Id. (citing Ex. 1027, 6:14–20, 2:56–63; Ex. 1003 ¶ 86). Petitioner points to a statement in Barsoum as “specifying that not all geometrically shaped constellations have a greater capacity than that of a constellation maximized for dmin.” Id. at 17 (citing Ex. 1027, 6:13–22). Petitioner asserts that Barsoum’s non-uniform constellations are capable of providing such greater parallel decoding capacity only after having been optimized for that purpose. Id. at 19 (citing Ex. 1027, 6:13–22, Ex. 1003 ¶ 92). Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“16–17, and 27–28 are obvious over the combination of Barsoum and ATSC327. Pet. 26. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21 upon which the challenged claims depend. Pet. 39–71, 96–98, 101–102. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See Prelim. Resp. As we have determined that Barsoum is not prior art to claims 6, 7, 16, 17, 27, and 28, the Petition does not establish a reasonable likelihood that those claims are obvious over the combination of Barsoum and ATSC327.” slip op. at 9
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,019,509 - PTAB · May 11, 2023 · IPR2023-00060 · APJ Michael T Cygan · IPR · Institution
The Board instituted review of claims 1–30 on the Robertson and Lloyd-Jones obviousness ground, finding a reasonable likelihood that claim 3 is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claim 3 of the ’480 patent. Accordingly, we institute an inter partes review as to claims 1–30 of the ’480 patent and the sole asserted ground of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in 2001 would have had at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar technical field, with at least two years of experience in the field of networked and Web-based media applications. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 23 (citing Ex. 1003 ¶¶ 38–44). Patent Owner submits an essentially identical description of this hypothetical person. Preliminary Resp. 13–14. We do not determine any meaningful significance to the differences between the parties’ representations. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as to its described lower limit, because it appears to be consistent with the specification of the ’480 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, both parties assert that no term requires express construction. Pet. 24; Prelim. Resp. 14. We note that no term is in controversy, and therefore, we do not need to construe any 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’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Consequently, each claim term is given its ordinary and customary meaning.” slip op. at 8
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,628,480 - PTAB · May 11, 2023 · IPR2023-00059 · APJ Michael T Cygan · IPR · Institution
The Board instituted review of claims 1–12 under both §103 grounds, finding a reasonable likelihood that claim 1 is obvious over Sharpe, Eintracht, and FotoFile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claim 1 of the ’275 patent. Accordingly, we institute an inter partes review as to claims 1–12 of the ’275 patent and both of the asserted grounds of unpatentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Patent Owner argues that Petitioner lacks a proper articulated reasoning for motivation to combine Sharpe with Eintracht. Patent Owner “would have recognized that Eintracht’s asynchronous annotation capability and groupware features would have improved the collaborate archival system of Sharpe.” Prelim. Resp. 32 (citing Pet. 59). Patent Owner states that the Petition provides no further basis or reasoning for combining the two references, or why such improvement would have been recognized. Id. at 32–33. We do not agree with Patent Owner’s argument because, as indicated above, Petitioner provides further analysis and reasoning at a different section of the Petition. Pet. 26. We determine that Petitioner’s discussion at that section is more than merely conclusionary, and sufficiently details the advantage in using a single data field to control the names in related annotations. Id. Consequently, we determine that Petitioner has sufficiently shown, for purposes of institution, adequate reason to combine the references. Petitioner asserts that this combination would have a reasonable expectation of success because both are implemented over a network via a server, and over the Internet via the World Wide Web. Id. at 28–29 (citing Ex. 1005, 4:21–28, 5:50–63, Fig. 2; Ex. 1006, 1:7–12, 1:26–35, 2:16–27, Fig. 3; Ex. 1003 ¶ 135). Petitioner relies upon a statement from Dr. Bederson that a person of ordinary skill in the art would have recognized the systems as structurally similar, and that in view of the similarities, that person would expect to be able to combine the features of Sharpe and Eintracht. Id. (citing Ex. 1003 ¶ 137).” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“We determine that the current record lacks sufficient evidence to show an actual reduction to practice. For actual reduction to practice, no showing of diligence is required, but as recognized by Patent Owner, “an inventor must prove that he constructed his claimed invention and that it would work for its intended purpose.” Mazzari v. Rogan, 323 F.3d 1000, 1005 (Fed. Cir. 2003) (cited at Prelim. Resp. 20–21). Additionally, in establishing that such an idea existed at the relevant time, an inventor’s testimony requires corroboration, and “[a]n evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Id. (quoting Price, 988 F.2d at 1195) (explaining that “[t]his infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent”). Mr. Frigon states that evidence of the reduction to practice of “elements of the invention claimed” is shown in attached copies of the code last modified on April 16, 2000. Ex. 2005 ¶¶ 4–5. In his declaration, and as reflected in Patent Owner’s mapping of claim elements to evidence supporting prior invention, Mr. Frigon does not provide any statement that his invention at that time included artificial intelligence algorithms to locate images as claimed. Id. at ¶ 15. At best, Mr. Frigon testifies that “it was known in the industry” that such algorithms could be applied. Id. Nor does any evidence tend to corroborate that artificial intelligence algorithms were part of Mr. Frigon’s invention at that time. Further, Patent Owner admits that the claim limitation of “filtering the input list to users in a contact list” is “not disclosed in the source code.” PO Sur-Reply, 3. Furthermore, that code is stated merely to be “a list of all users who have been associated with photos.” Prelim. Resp. 23–24. Although Patent Owner points to Mr. Frigon’s declaration for support, Patent Owner points solely to such code to show the multiple steps of receiving an input from the identifying user of a named user from a list of users including users in a contact list associated with the identifying user, and in response to that input, determining a unique user identifier of the named user. Prelim Resp. 24–25. Although Mr. Frigon indicates that this concept had “been conceived at this point, and was in development at the time of drafting the provisional application,” Mr. Frigon does not provide any statement tending to show that it was actually reduced to practice. Ex. 2005 ¶ 15. there is insufficient evidence to show that Mr. Frigon “constructed his claimed invention.” Consequently, the current record does not show an actual reduction to practice of the invention of claim 1 prior to the effective date of Sharpe.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in 2001 would have had at least a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar technical field, with at least two years of experience in the field of networked and Web-based media applications. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 13–14 (citing Ex. 1003 ¶ 39). Patent Owner submits an essentially identical description of this hypothetical person. Preliminary Resp. 15. We do not determine any meaningful significance to the differences between the parties’ representations. For purposes of this Decision, we adopt Petitioner’s 2 Neither party presents evidence or arguments regarding objective evidence of non-obviousness at this stage. specification of the ’275 patent and the prior art of record.” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,417,275 - PTAB · May 11, 2023 · IPR2023-00058 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–26 on all asserted grounds, finding a reasonable likelihood that Meta would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the two proposed definitions are similar, with Patent Owner’s slightly more narrowly drawn, limiting the subject of the bachelor’s degree and not providing that more experience might substitute for less education or more education for less experience. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art, modified to remove the open-ended term “at least” in two places, to avoid providing no upper bound to the level of skill considered. See Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 697 (Fed. Cir. 1983) (Considering obviousness to an ordinarily skilled person rather than “to the judge, or to a layman, or to those skilled in remote 5 On the current record, no party has raised any arguments relating to objective evidence of nonobviousness. See Pet. 77. reasonable and consistent with the prior art, and it is supported by the testimony of Dr. Bederson.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this case, no claim terms require construction to reach our decision to institute, and therefore we do not provide any constructions here. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“been obvious over a combination of Sharpe and Eintracht and that claims 18, 19, and 26 would have been obvious over a combination of Sharpe and Carey or over a combination of Sharpe, Eintracht, and Carey. Pet. 59–77. Patent Owner argues Petitioner presents no basis for combining Sharpe and Eintracht other than that “Eintracht’s asynchronous annotation capability and groupware features would have improved the collaborat[iv]e archival system of Sharpe.” Prelim. Resp. 32–34 (quoting Pet. 59). Patent Owner describes Petitioner’s arguments as “bare” and “conclusory” and argues that there is no articulated reasoning with rational underpinning presented by Petitioner. Id. Patent Owner makes the same argument with respect to the combination of Sharpe with Eintracht and Carey. Id. at 34. Petitioner, however, presents a discussion of an issue present in the disclosure of Sharpe and the solution provided by Eintracht, and, as discussed, provides citations and expert testimony relating to the motivation for the combination. Pet. 59–64. As we institute, Patent Owner will have the opportunity to address these arguments, however, we note that, on the present record and for the purposes of institution, Petitioner’s arguments with respect to the combination appear to be more than conclusory and to provide articulated reasoning with rational underpinning and to show a likelihood of success in showing a proper motivation to combine Sharpe and Eintracht.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,959,291 - PTAB · May 11, 2023 · IPR2023-00057 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–8 on all petition grounds, finding a reasonable likelihood that Meta would prevail on claims 1, 3, and 6–8 over Sharpe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“With respect to claim 6, on the current record and for the purposes of institution, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to its assertions of obviousness over Sharpe. Accordingly, we institute an inter partes review of all challenged claims under all grounds set forth in the Petition.” slip op. at 27
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“determine that Patent Owner’s evidence does not establish a date of actual reduction to practice prior to the effective date of Sharpe. Patent Owner’s support chart with reference to claim 6 and Mr. Frigon’s work on websites and Mr. Frigon’s declaration do not clearly explain the interrelationships between the exhibits referenced. Ex. 2005 ¶¶ 5–12. Additionally, screenshots purporting to be the “Picts” table of “pictures.mdb” show data that does not appear to be present in Exhibit 2007. Id. ¶ 12. While Mr. Frigon argues that each of Exhibits 2006–2012 “provide code that was last modified on April 16, 2000,” this is corroborated only by a screenshot possibly relating to one of these exhibits. Compare Ex. 2005 ¶ 5 (metadata relating to a file “pictures.asp” (underlining added)), with id. ¶ 8 (describing “picture.asp”), Prelim. Resp. v (Patent Owner’s exhibit list identifying Ex. 2009 as “Picture.asp”). While we acknowledge that Patent Owner supplies evidence that may corroborate the inventor’s declaration, this evidence does not identify what was demonstrated to Mr. Sacko or Ms. Larson. See Ex. 2015; Ex. 2016 ¶¶ 4, 6, 7; Ex. 2018 ¶¶ 2, 6, 7. Additionally, as Petitioner points out, it is unclear in certain cases whether “cmalone.com” (see Prelim. Resp. 21; Ex. 2005 ¶¶ 5, 13; Ex. 2016 ¶ 3) or unexplained what, if any, the distinctions are between these sites or changes (if any) which may have been made between the purported April 2000 date of the code and supporting materials provided and the implementation in these sites. Prelim. Reply 5–6. Because of these issues with support in the relied-upon portions of the exhibits, the evidence does not show that an embodiment of the invention was performed that met all the limitations of claim 6, or of the other challenged claims. Additionally, even assuming that the disclosure in the provisional application adequately provides the necessary disclosure of the subject matter of the challenged claims, we still do not find the current record sufficiently supports antedating via diligence from conception to constructive reduction to practice. Patent Owner argues that “[p]er the prosecution history, the inventors [sic] signed Declarations and had completed the provisional patent application as early as August 15, 2000.” Prelim. Resp. 2. But constructive reduction to practice is shown through the filing of (rather than the preparation of) such a priority application, and thus Patent Owner does not show constructive reduction to practice until the ’994 provisional filing date of November 15, 2000. Prelim. Sur-reply 1, 4. Under a rule of reason analysis on this record, the evidence does not show reasonably continuous diligence during the time period from just before Sharpe’s September 26, 2000 filing date (by which time Patent Owner asserts the provisional application had been completed) and November 15, 2000, the filing date of the ’994 provisional.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that one of ordinary skill would have been motivated to use a Note Owner identifier from Eintracht in the system of Sharpe to differentiate between notes generated by various users. Pet. 64 (citing Ex. 1006, 8:9–11; Ex. 1003 ¶ 289). Petitioner additionally argues that Sharpe is silent on whether multiple users of the Sharpe system can index images asynchronously, and Eintracht provides a solution allowing for asynchronous annotation of images and collaborative group work on documents. Id. at 59–62 (citing Ex. 1003 ¶¶ 143–147). Petitioner additionally argues that one of ordinary skill would have had a reasonable expectation of success as the systems are similar and the modifications would have been “straightforward software and database schema updates.” Id. at 64 (citing Ex. 1003 ¶ 290), 62–63 (citing Ex. 1003 ¶¶ 148–149). Generally, Petitioner provides an extensive explanation, supported by citations to the references and Dr. Bederson’s declaration, regarding the motivation to combine. Id. at 59–64.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In this case, no claim terms require construction to reach our decision to institute, and therefore we do not provide any constructions here. slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,954,432
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.