• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Soundclear Technologies LLCAll claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00565 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–5 are unpatentable because Amazon showed they are anticipated by Shin; the Board did not reach Amazon’s contingent obviousness ground over Shin.

  RulingsFinal written decision

  • BurdenOther

    “Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims 1–5 of the ’337 patent. For the reasons we identify below, we hold that Amazon has demonstrated by a preponderance of the evidence that these claims are unpatentable.” slip op. at 2

  • Skill levelOther

    “2. Level of Skill in the Art In determining whether an invention would have been obvious, we” slip op. at 18

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

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 17

  Patent outcomesUS 11,069,337 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,069,337
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Mar 23, 2026 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–6, 14–16, and 19 are unpatentable based on anticipation by or obviousness over Pratt, and obviousness over Pratt–Ku, Ku, or Ku–Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, PO Resp. 18. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions identified in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision. The outcome of our decision would be the same under Patent Owner’s proposal.” slip op. at 7

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

    “We find insufficient support in the specification or prosecution history to narrow the term “haptic effect” to only one that has not been modified or combined with another haptic effect. The ’738 patent still refers to combined or modified haptic effects as a “haptic effect.” Ex. 1001, 11:35–38 (“a haptic effect may further be modified or combined with another haptic effect” and “the haptic effect can include one or more haptic effects”). We also find no support for importing into the construction of “haptic effect” the ’738 patent’s example in which a haptic effect can be “based on the proximity signal and the touch sensor signal.” That is already an explicit claim limitation. Id. at 14:19–20 (“generate a haptic output signal based at least in part on the first [proximity] and second [touch] sensor signals”). Including that limitation as part of the construction of “haptic effect” would render the limitation superfluous. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“The Board was correct to not include in its construction of ‘menu’ features of menus that are expressly recited in the claims . . . . Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). We also disagree with Patent Owner that the ’738 patent’s references to haptic effects modified or combined with other haptic effects are unclaimed embodiments. The ’738 patent discloses that a proximity-based haptic effect may be combined with a touch-based haptic effect, such as when “a particular haptic effect associated with a particular control on a user interface element [is] further . . . modified or combined with another haptic effect based on the proximity sensor signal,” or when “the haptic effect [to be output by the processor] . . . include[s] a haptic effect meant to confirm ‘pushing’ on a virtual button.” Ex. 1001, 11:32–40. These examples are consistent with the claim language and we find no credible evidence in the record that these embodiments are intended to be excluded from the claimed invention. Thus, we agree with Petitioner that it would be incorrect to construe the term “haptic effect” to include the extraneous limitations Patent Owner proposes. We also agree with Petitioner that a person of ordinary skill in the art reading the ’738 patent disclosure would have understood that a combined or modified haptic effect is still a haptic effect.” slip op. at 11

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

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13

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

    “We find Petitioner’s arguments persuasive and disagree with Patent Owner’s arguments to the contrary. Ku discloses summing two overlapping vibration signals, one “based at least in part on” data from a proximity sensor and another “based at least in part on” data from a touch sensor. Ex. 1008, Fig. 12 (items 705, 710, and 715). The summed signal 715 is the basis for generating what the user would perceive as a single haptic effect. See Ex. 1004 ¶ 210–212. This meets limitation 1F. We agree with Petitioner’s argument as to why there would have been a motivation to modify Pratt to include Ku’s teachings. Petitioner’s argument is not merely that Pratt was ready for improvement; Petitioner persuasively argues that a person of ordinary skill in the art would have had reason to add Ku’s method for confirming that the user has touched the intended icon to Pratt’s system. Both Pratt and Ku already disclose using both proximity and touch data in generating a haptic effect, and based on the evidence of record, we are of the view that combining the two teachings would not have been uniquely challenging or otherwise beyond the level of ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog presents no evidence that the inclusion of a reader in [electronic children's toys] was uniquely challenging or difficult to one of ordinary skill in the art.” (citing KSR, 550 U.S. at 419–420))” slip op. at 32

  Patent outcomesUS 11,175,738 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,738
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Oct 24, 2025 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–20 are unpatentable: Goldenberg anticipates or renders claims 1–6, 8–13, and 15–19 obvious, and Goldenberg with Cruz-Hernandez renders claims 7, 14, and 20 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposed levels of ordinary skill are substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Because we discern no dispositive difference between the parties’ proposals, and neither party has argued that the choice between the two would affect the outcome,6 we adopt Petitioner’s proposed level of skill for this decision. We note, however, that our decision would be the same under Patent Owner’s proposal.” slip op. at 8

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

    “to,” as recited in each of claims 1, 8, and 15, to “require[] a cause-and-effect relationship between a secondary event (e.g., a haptic effect) that occurs in reaction to a first event (e.g., entry of the user input element to one or more positions within the boundary range of positions).” PO Resp. 26–27 (citing Ex. 2004 ¶ 44). Patent Owner argues that “in response to” refers to more than just a coincidence and involves at least some degree of causality. Id. at 27 (citing American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318, 1339–40 (Fed. Cir. 2011); Ex. 2007, 12–14 (dictionary definition); Ex. 2008, 7 (dictionary definition); Ex. 2006, 30:13–31:2, 32:8–11, 32:17– 21 (testimony by Mr. Ward)); PO Sur-reply 8–9 (citing Ex. 2009, 34:8–19, 36:5–21 (testimony by Mr. Ward)).” slip op. at 17

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

    “to,” as recited in each of claims 1, 8, and 15, to “require[] a cause-and-effect relationship between a secondary event (e.g., a haptic effect) that occurs in reaction to a first event (e.g., entry of the user input element to one or more positions within the boundary range of positions).” PO Resp. 26–27 (citing Ex. 2004 ¶ 44). Patent Owner argues that “in response to” refers to more than just a coincidence and involves at least some degree of causality. Id. at 27 (citing American Calcar, Inc. v. American Honda Motor Co., 651 F.3d 1318, 1339–40 (Fed. Cir. 2011); Ex. 2007, 12–14 (dictionary definition); Ex. 2008, 7 (dictionary definition); Ex. 2006, 30:13–31:2, 32:8–11, 32:17– 21 (testimony by Mr. Ward)); PO Sur-reply 8–9 (citing Ex. 2009, 34:8–19, 36:5–21 (testimony by Mr. Ward)).” slip op. at 17

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

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 18

  Patent outcomesUS 10,627,907 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,627,907
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Jul 31, 2025 · IPR2024-00508 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–18, 21–24, and 26–29 are unpatentable as anticipated by Rosenberg; the Board did not reach the alternative Brock grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction.” Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of ordinary skill for this Decision.” slip op. at 5

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

    “Petitioner argues that we need not construe any claim terms explicitly because “the Petition’s prior art discloses each element of the challenged claims under any plausible construction.” Pet. 8. We agree with Petitioner that, for this Decision, we do not need to construe any of the terms explicitly. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (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))). To the extent that we discuss specific claim language, we do so below in the context of the prior art. See, e.g., infra Section III.C.2(e).” slip op. at 6

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

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 6

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

    “A claim is unpatentable for obviousness under § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.4 See Graham, 383 U.S. at 17–18.” slip op. at 7

  Patent outcomesUS 9,116,546 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,116,546
• Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentable
  PTAB · Apr 16, 2025 · IPR2024-00052 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1, 2, 4, 7, 8, and 13–16 are unpatentable as obvious over Kim, Invisalign, Salah, and Maninis.

  RulingsFinal written decision

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

    “conclusion based on underlying factual findings, including whether the reference was publicly accessible. Jazz Pharms., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018)). “A reference is considered publicly accessible ‘upon a satisfactory showing that such 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.’” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). “If accessibility is proved, there is no requirement to show that particular members of the public actually received the information.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). In an inter partes review, the petitioner bears the burden of establishing that a particular document is a prior art printed publication. Jazz Pharms., 895 F.3d at 1356 (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).” slip op. at 34

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

    “the gap between them, can be resolved even with simple edge detection techniques,” so “[a]pplying more advanced techniques, such as the deep learning taught by Salah and Maninis, would have been expected to resolve the locations of each tooth’s edge and the corresponding aligner edges with even greater precision and accuracy.” Ex. 1048 ¶ 21. Further, Dr. Foroosh provides testimony that Maninis “teaches how contours of different strengths may be used advantageously to discern shapes of objects (and parts of objects) at varying levels of detail.” Ex. 1048 ¶ 24; see also Ex. 1002 ¶¶ 59, 97, 131. Accordingly, we are not persuaded that Salah teaches away from the combination.” slip op. at 64

  Patent outcomesUS 11,049,248 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,049,248
• Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentable
  PTAB · Mar 3, 2025 · IPR2023-01369 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over Salah, Carrier, and Maninis; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “Ex. 1002 ¶ 6; Ex. 1003, 12–13; see also Ex. 1002 ¶ 7 (describing a project that “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans”). Therefore, we find on this record that Dr. Foroosh qualifies to testify from or about the perspective of a POSITA, and further meets the requisite qualifications to opine on the prior art relied upon in the challenge of the ’409 patent. Accordingly, we disagree with Patent Owner’s assertion that Dr. Valley’s testimony regarding the dental nature of the references in the Petitioner’s challenge includes disclosures that Dr. Foroosh did not understand when forming his opinions. PO Sur-Reply 3–4 (citing Ex. 1035 ¶¶ 34, 41–44; Ex. 2053, 38:18–39:6, 64:5–67:19; Ex. 2048, 130:8–11, 143:22–145:10, 149:19–22).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1002 ¶ 6; Ex. 1003, 12–13; see also Ex. 1002 ¶ 7 (describing a project that “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans”). Therefore, we find on this record that Dr. Foroosh qualifies to testify from or about the perspective of a POSITA, and further meets the requisite qualifications to opine on the prior art relied upon in the challenge of the ’409 patent. Accordingly, we disagree with Patent Owner’s assertion that Dr. Valley’s testimony regarding the dental nature of the references in the Petitioner’s challenge includes disclosures that Dr. Foroosh did not understand when forming his opinions. PO Sur-Reply 3–4 (citing Ex. 1035 ¶¶ 34, 41–44; Ex. 2053, 38:18–39:6, 64:5–67:19; Ex. 2048, 130:8–11, 143:22–145:10, 149:19–22).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “by Petitioner, we find that Petitioner has demonstrated by a preponderance of the evidence that Exhibits 1022, 1023, 1025, and 1026 are true and accurate versions of documents downloaded using the Internet Archive’s Wayback Machine. Accordingly, we are satisfied that Exhibits 1022, 1023, 1025, and 1026 have thereby been authenticated by the testimony of Mr. Frank-White. Ex. 1031. For these reasons, we decline to exclude or disregard Exhibits 1022, 1023, 1025, and 1026 as lacking authenticity.” slip op. at 72

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “prior art under AIA § 102, we only need to determine whether the provisional application describes the subject matter in the non-provisional application relied upon by Petitioner. Stated differently, the holding in Dynamic Drinkware as to whether a claim in the non-provisional has sufficient written description support in the provisional application does not apply to an AIA § 102 reference, such as Carrier. Id. at 31–33. Accordingly, we do not agree with Patent Owner that “the reasoning and statutory interpretation in Dynamic Drinkware still controls.” PO Sur-Reply 4. Because Petitioner provides in the Petition citations to where the Carrier Provisional describes the subject matter relied upon in Carrier (Pet. 10), and Patent Owner does not persuasively argue in the Response or the Sur-Reply that Petitioner’s proffered support is deficient, we agree on this record that the subject matter of Carrier that Petitioner relies upon for its challenge, which also appears in the Carrier Provisional, is prior art to the claims of the ’409 patent. Consequently, we disagree with Patent Owner’s argument regarding the alleged lack of written description support in the Carrier provisional for a user (as opposed to a dental professional) using a mobile device to capture dental images (PO Resp. 24; Sur-Reply 5–6) because Petitioner does not rely on Carrier for such a feature, which is not even recited in the challenged claims. Accordingly, on the record before us, we determine that the subject matter from Carrier upon which Petitioner’s challenge is based qualifies as prior art to challenged claims of the ’409 patent.” slip op. at 28

  Patent outcomesUS 10,755,409 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,755,409
• Paypal Holdings, Inc. / Paypal, Inc. v. Fintiv, Inc.All claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00744 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–3 and 5–7 are unpatentable: claims 5 and 7 are anticipated by Tumminaro, and claims 1–3 and 5–7 would have been obvious over the stated combinations.

  RulingsFinal written decision

  • Expert testimonyOther

    “2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the” slip op. at 41

  • Skill levelOther

    “2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the” slip op. at 41

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

    “1. Principles of Law To establish anticipation, “all of the elements and limitations of the” slip op. at 40

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

    “1. Principles of Law A claim is unpatentable under § 103(a) if the differences between the” slip op. at 63

  Patent outcomesUS 8,538,845 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,538,845
• Fanduel, Inc. v. Winview Inc.All claims unpatentable
  PTAB · Jan 29, 2024 · IPR2022-01307 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1, 2, 9, 14–16, 20, 21, 23, 24, 26, 27, 31–33, 40, 41, 43, and 49 are unpatentable as anticipated by Vänskä or obvious over Vänskä, alone or with Barros.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art Factors pertinent to a determination of the level of ordinary skill in the art include “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). “Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case.” Id. at 696–97. Based on the fully developed trial record, we are able to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Rubin, FanDuel argues that “a person of ordinary skill in the art . . . as of June 20, 2005 [(the filing date of the ’356 application)], would typically have at least a bachelor’s degree, or equivalent, in Computer Science and several years of experience in software development.” Pet. 13 (citing Ex. 1003 ¶¶ 20, 21). In its Patent Owner Response, WinView does not address the level of ordinary skill in the art. See PO Resp. Accordingly, we maintain our preliminary determination regarding the level of ordinary skill in the art. Dec. on Inst. 9–10. That is, we adopt FanDuel’s proposed assessment of the level of ordinary skill in the art because Dr. Rubin’s supporting testimony is consistent with the ’543 patent and the asserted prior art. We apply this assessment of the level of ordinary skill in the art in our anticipation and obviousness evaluations below.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner

    “particular issue, the evidence demonstrates that it was well-known to a person of ordinary skill in the art that GPRS provides Internet connectivity. We address each piece of relevant evidence in turn. First, as evidence of the general background knowledge in the art, FanDuel introduced a document with its Reply that explicitly defines GPRS and, in particular, discusses the difference between using GSM and GPRS protocols. Ex. 1011. According to this document, “GPRS revolutionized GSM by providing real data capability and enabling emails and simple web browsing – albeit at speeds much slower than the current standard.” Id. at 1. This document further states that “GPRS provided . . . uninterrupted connectivity to the internet for mobile phones.” Id. FanDuel argues—and we agree—that this document is evidence that a person of ordinary skill in the art would have understood that GPRS provides Internet connectivity to mobile phones. See Pet. Reply 13.” slip op. at 27

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

    “Given that controlling case law mandates that we must consider the explicit and inherent disclosures in Vänskä, “together with the knowledge of one of ordinary skill in the pertinent art” (In re Paulsen, 30 F.3d at 1480), we find that evidence of record supports a finding that Vänskä’s mobile terminal 100 connects to the Internet via a cellular data network when downloading the disposable mini-applications over mobile WAN 130 using GPRS. Stated differently, Vänskä’s mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS and, therefore, describes the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” We do not agree with WinView’s argument that FanDuel fails to explain how Vänskä discloses an actual or direct connection to the web or Internet purportedly required by the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 15–19; PO Sur-reply 3–6. Apart from the “mobile . . . computing device” being “web-connected,” the “loading,” “selecting,” and “downloading” steps of independent claim 1 do not require explicitly an actual or direct transmission of data over the web. See Ex. 1001, 12:19–42. Similarly, apart from the “mobile . . . computing device” being “Internet-connected,” the “transmitting” and “receiving” steps of independent claim 49 do not require explicitly an actual or direct transmission of data over the Internet. Id. at 15:3–26. The specification of the ’543 patent supports our view in this regard because it discloses that “the [computing] device connects via the cellular network and/or Internet to the service provider’s server.” Id. at 8:5–9, Fig. 1 (step 106); see also id. at 10:64–65 (stating that, when downloading the “Activity Client,” “the cell phone connects through the cellular network and Internet to a game server”). Therefore, contrary to WinView’s arguments, the specification of the ’543 patent contemplates that the mobile computing device connects to the Internet via a cellular network—it does not require an actual or direct connection to the Internet. The method steps of independent claims 1 and 49 reflect this broad scope because, as we explain above, they do not require an actual or direct transmission of data over the web or Internet. Given the broad scope of the specification and the plain language of independent claims 1 and 49, we agree with FanDuel that Vänskä properly accounts for the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device” because it discloses that mobile terminal 100 connects to the Internet via the mobile WAN 130 using GPRS. We also do not agree with WinView’s argument that, because Vänskä does not disclose any of the browsers, servers, or protocols necessary for web or Internet connectivity, it cannot disclose the claimed “mobile web-connected computing device” and “mobile Internet-connected computing device.” See PO Resp. 20–22, PO Sur-reply 7. WinView fails to recognize that, apart from a single instance in the specification that is labeled as an “example,” the ’543 patent also fails to disclose any browsers, servers, or protocols necessary for web or Internet connectivity. See Ex. 1001, 6:48 (“An example protocol implemented is TCP.”). Put simply, WinView seeks a level of detailed description in Vänskä that is not otherwise provided in the ’543 patent. We decline to impose such a heightened standard on Vänskä, especially when neither the specification nor the claims of the ’543 patent sufficiently describe the purported invention as requiring the use of browsers, servers, or protocols necessary for an actual or direct web or Internet connectivity.” slip op. at 29

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

    “In its Petition, FanDuel contends that, “[f]or purposes of this proceeding only, [FanDuel] does not believe any claim construction is necessary to resolve [its unpatentability] analysis.” Pet. 12 (citing Ex. 1003 ¶ 41). In its Patent Owner Response, WinView agrees with FanDuel by stating that “no [claim] terms require construction,” and that each claim term should be giving its ordinary and customary meaning. PO Resp. 11. Based on the fully developed trial record, there is no controversy between the parties that requires us to construe any claim terms. 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))).” slip op. at 8

  Patent outcomesUS 10,721,543 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,721,543
• Docusign, Inc. v. Paul C. ClarkAll claims unpatentable
  PTAB · Oct 25, 2023 · IPR2022-00923 · APJ Michael T Cygan · IPR · Final written decision

  Claim 1 is unpatentable as obvious over Duncan, RFC 793, and RFC 1323; the Board did not reach the alternative Grosser ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time the ’066 patent was filed. Pet. 13. Relying upon the Black Declaration, Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in computer science, or a related field, with at least two years of professional experience working in network engineering. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of computer networks, such as experience developed 2 Patent Owner does not identify any secondary considerations to be considered. See PO Resp. while developing client-server networks, less professional experience is needed to attain the ordinary level of skill. Id. (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s assessment of the level of ordinary skill in the art. PO Resp. 2. Based on the fully developed trial record, we accept the assessment offered by Petitioner and uncontested by Patent Owner as it is supported by the Black Declaration and is consistent with the ’066 patent and the asserted prior art. We apply this assessment in our obviousness analysis below.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “network level or an application level protocol, is inconsistent with the prosecution history. During prosecution, the Examiner pointed to Zarom’s conversion of certain instructions as converting from one network application level protocol to a target application level protocol. Ex. 1002, 49. However, during an interview with Dr. Clark (the applicant), the Examiner agreed with Dr. Clark that Zarom’s teaching was directed to VPN (Virtual Private Network) level protocols, which did not teach the newly 3 Patent Owner seeks to incorporate argument from its Preliminary Response; however, our rules do not permit such incorporation by reference. 37 C.F.R. § 42.6(a)(3). amended “network application level protocol.” Id. at 40. Therefore, we do not adopt Petitioner’s alternative construction. In adopting Patent Owner’s construction, we note that it does not explicitly exclude either a network level protocol or an application level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Inventor and Declarant Dr. Clark indicated in an interview during prosecution that network application level protocols would include “SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009 (prosecution history of U.S. Patent Application No. 09/568,215 (“the ’215 application”)), 192; Ex. 1003 ¶ 71. Dr. Black states that SSL (Secure Sockets Layer) is not an application level protocol, although the other listed protocols are application level protocols. Ex. 1003 ¶ 71. We additionally note that, during prosecution of the ’215 application, the ultimate parent of the ’066 patent, Patent Owner stated that “network application level protocol” translation includes translating “http to https.” Ex. 1009, 220. Patent Owner confirmed this statement at oral argument. Tr. 26:15–27:3.” slip op. at 10

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

    “on the front page of each document, the well-known nature of the standards documents, the statement of Dr. Black that he personally accessed the documents before the critical date and that each was published on the listed date, and the statements of Ms. Ginoza averring that both RFC documents were “indexed and placed in a public repository,” that RFC 793 was reasonably accessible to the public no later than October 1992, and that RFC 1323 was reasonably accessible to the public no later than May 1992. Paper 6, 6–7, Ex. 1020 ¶¶ 4–7; Ex. 1018 ¶¶ 6–12. We determine that the totality of the evidence indicates that Petitioner has shown, by a preponderance of the evidence, that the reference was available to, and able to be located by, persons interested and ordinarily skilled in the subject art on or before the critical date of the ’066 patent. Accordingly, Petitioner has met its burden to show both documents are prior art. 3. Conclusion Based on the fully developed trial record, we determine Petitioner has demonstrated that these references are prior art patents or printed publications under 35 U.S.C. § 102. See Pet. 3, 16; Ex. 1004, codes (22), (43); Ex. 1006, codes (22), (43).” slip op. at 6

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

    “2. Analysis Upon review of Petitioner’s assertions in its Petition, Petitioner’s Reply, and its supporting evidence, and Patent Owner’s arguments in its Response, Sur-reply, and its supporting evidence, we are persuaded that Petitioner has met its burden to show that the combined teachings of Duncan, RFC 793, and RFC 1323 render obvious the challenged claim. Petitioner provides claim mappings of each individual limitation of the challenged claim to the combined teachings. Pet. 19–33. Patent Owner argues only against Petitioner’s assertions for limitation [1.6]. See PO Resp. For the reasons stated below, we determine that the asserted prior art teaches each limitation of claim 1.” slip op. at 13

  Patent outcomesUS 8,695,066 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,695,066

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.