- X Corp. v. Sterling Computers CorporationAll claims unpatentablePTAB · Jun 9, 2026 · IPR2025-00299 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over the stated Dumais-based and Kircher/Krug grounds; Patent Owner’s and Petitioner’s motions to exclude are dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision adopted Petitioner’s definition of a person of ordinary skill in the art. Inst. Dec. 8–9. In its response, Patent Owner adopts Petitioner’s proposed level of ordinary skill. See PO Resp. 14–15 (“Patent Owner and its expert adopt the Board’s definition for purposes of this Response”). Having considered the record, we continue to adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’217 Patent. Accord Inst. Dec. 8–9.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“1. “computer program modules” The parties dispute whether four “computer program modules comprising” (1) “a monitoring module,” (2) “a first relevance measurement module,” (3) “a second relevance measurement module,” and (4) “a relevance analysis module” (collectively, “module limitations”) invoke 35 U.S.C. § 112 ¶ 6 and should be treated as means-plus-function limitations. See Pet. 8–18; PO Resp. 15–18; Pet. Reply 3–5; PO Sur-reply 4–7. However, the parties do not argue that the construction of these terms affects the analysis of Petitioner’s challenges. See PO Resp.; Pet. Reply; PO Sur-reply. Moreover, our analysis does not rely on any particular construction of these terms and, so, we need not resolve this dispute.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. “one or more measures derived from the group consistent of” Petitioner asserts limitations 1[g] and 1[g][i]–1[g][iv] recite an open Markush group listing alternatively useable members. Pet. 20–21 (citing Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005); Abbot Lab’ys v. Baxter Pharm. Prod., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (explaining that the listing of specified alternatives within a claim is referred to as a Markush group or Markush grouping)); See Ex. 1001, 47:47–58. Patent Owner does not dispute Petitioner’s construction. See PO Resp; PO Sur-reply. As these terms are not in controversy, we need not opine on this construction.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“Petitioner’s and Patent Owner’s respective constructions overlap in their requirement that “cognate” users share similar past user actions and assessments or are defined by similar direct input by the user. See Pet. 18; PO Resp. 20–21; PO Sur-reply 10. Petitioner argues that Patent Owner’s construction “exclude[s] ‘groups’ from the claims” and further limits the scope of to users who share actions (Pet. Reply 8–9), but Patent Owner states that its proposed construction does not so limit the claims (PO Sur-reply 10). As such, there is no disagreement that “cognate” users share similar past user actions and assessments or are defined by similar direct input by the user. As there is no controversy, we need not, and do not, construe the meaning of “cognate.” However, Patent Owner’s requirement that “at least one other of the plurality of users” is specifically cognate to “the user” who was sent the content is plainly recited in the claim language itself. The claim recites a “relevance score of a piece of electronic content sent from a sender to a user” in the preamble and similarly again in limitation 1[g]. See Ex. 1001, 47:25–28 (emphasis added), 45:62–64. The limitation in question directly references the claimed “user” when reciting the cognate relationship: “identify at least one other of the plurality of users . . . that is cognate to the user.” Ex. 1001, 47:43–45 (emphasis added). As such, the claim language plainly supports Patent Owner’s requirement and Petitioner does not contest that requirement. See Pet. Reply 8. least one other of the plurality of users . . . that is cognate to the user” as requiring that the identified other user is cognate specifically to the user whose relevance score is being determined.” slip op. at 12
Patent outcomesUS 7,716,217 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Google LLC v. Eyesmatch Ltd.Some claims unpatentablePTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23
Patent outcomesUS 8,982,110 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Google LLC v. Cellular South, Inc.Institution deniedPTAB · Nov 21, 2025 · IPR2025-00877 · APJ William V Saindon · IPR · Institution
The Board denied institution for claims 1–11 because the Zhao-Kouzani combination did not sufficiently show a fractal representation based on landmarks.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’853 patent is unpatentable, and we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“generally known in the art, and that this is acknowledged by the ’853 patent. Pet. 40–41 (citing, e.g., Ex. 1001, 15:40–44). Petitioner asserts that Kouzani touts the benefits of fractal models and that it would have been obvious to use Kouzani’s fractal model as the object model in Zhou. Pet 44 (asserting that “[a] person of ordinary skill would have therefore been motivated to implement Kouzani’s techniques in Zhao’s system”); see also id. 42–45. (entire argument). Patent Owner argues that Kouzani’s fractals would not result in the claimed limitation. Prelim. Resp. 21–23. In particular, Patent Owner points out that Kouzani’s fractals use a block-based fractal system, which do not include “a representation of the object based on landmarks associated with the object” as required by claim 1. Id. at 21–22. Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13 (quoting in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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)).” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,126,853 - PTAB · Nov 7, 2025 · IPR2025-00913 · APJ Brian P Murphy · IPR · Institution
The Board instituted review of claims 1–30 on all asserted grounds, finding a reasonable likelihood that claims 1–25, 27–28, and 30 are obvious over Menon, Trefethen, RS6000, and POEref.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. We determine that the Petition satisfies the reasonable likelihood of prevailing standard under 35 U.S.C. § 314(a). We begin our analysis with a discussion of the Menon, Trefethen, RS6000, and POEref references. slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the description in the ’034 patent, the prior art of record, and the testimony of both experts.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner relies on the ordinary and customary meaning of the claim terms consistent with the Phillips standard. Pet. 12–13 (citing 37 C.F.R. § 42.100(b)). The Petition addresses the construction of “peer-to-peer architecture” recited in independent claims 1 and 30 of the ’034 patent, a limitation we need not construe to decide the institution question. Id. at 13; Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner contends that “no claim construction is required” to address the Petition’s asserted deficiencies. Prelim. Resp. 6. Patent Owner also contends, however, that the Petition relies on a “novel claim construction” of limitations [1.4.1] and [1.5.1]—“second [third] hardware processor with a plurality of processing cores”—to support Petitioner’s obviousness argument. Id. at 11–12.8 Patent Owner challenges the Petition’s reliance on “single core processors on different chips,” such as the Power3 single-core processors of the Symmetric Multi- Processor (“SMP”) configuration disclosed in the RS6000 reference, as a disclosure of limitations [1.4.1] and [1.5.1]. Id. Patent Owner contends that such single-core processors on different chips do not satisfy limitations [1.4.1] and [1.5.1] because the ’034 patent “claims only multicore processors.” Prelim. Resp. 5 (citing Ex. 1001, 7:15–27). Petitioner responds in part as follows: To the extent PO is implicitly arguing that RS6000’s “four, eight, twelve, or sixteen 375 MHz 630FP 64-bit processors” do not teach the recited “cores,” Patent Owner’s argument excludes embodiments described in the ’034 patent’s specification. The ’034 patent describes “[p]rocessor cores [as] generally independent microprocessors.” Ex.1001, 5:14–15. Patent Owner’s attempt to exclude RS6000 from the scope of the claims 8 Pursuant to the Board’s Order on Related Matter Updates (Paper 14), the parties filed the September 26, 2025 Claim Construction Order entered in the co-pending District Court litigation in this proceeding. Ex. 1085. The District Court Claim Construction Order did not construe the claim phrase “hardware processor with a plurality of processing cores.” Id. patent where the processor has independent microprocessors. Patent Owner’s attempt to distinguish RS6000’s Symmetric MultiProcessor as a “configuration” (Paper 8, 24) also fails because a “Symmetric MultiProcessor configuration” is no different than the ’034 patent’s description of a configuration of independent microprocessors. Id. Paper 9, 30.9 It is apparent there is a dispute over the plain meaning of Limitations [1.4.1] and [1.5.1], “a second [third] hardware processor with a plurality of processing cores,” recited in the independent claims.10 The parties are ordered to propose and support a particularized plain meaning or other construction of Limitations [1.4.1], [1.5.1], and [30.1.2] in their briefs. The parties are ordered to analyze the relevant claim language and cite to the specification and prosecution history in support of their claim construction, where applicable, with particular attention to the description of a hardware processor with a plurality of processing cores in the ’034 patent. See, e.g., Ex. 1001, 5:11–37, 7:14–36, 9:50–10:3.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artInstituted
“Motivation to Combine and Analogous Art The Petition offers several motivations to combine Menon, Trefethen, RS6000, and POEref in the manner claimed in the ’034 patent with a reasonable expectation of success, which we find sufficient on the present record. The Petition first asserts that Menon and Trefethen are analogous prior art because they pertain to the same “field of cluster computing” as the ’034 patent and “are reasonably pertinent to the problem of the ’034 patent, namely, executing a single program on multiple nodes.” Pet. 22 (citing Ex.1001, 1:14–15; Ex.1003, ¶¶ 65–69; Ex. 1005, 2; Ex. 1006, Abstract). The Petition points out that Menon expressly cites and builds on the MultiMATLAB system taught by Trefethen. Id. (citing Ex. 1003 ¶ 71; Ex. 1005, 1–2). The Petition also contends that: Accordingly, Menon and Trefethen together represent a combination of prior art elements according to known methods (executing MATLAB code on a multiprocessor system) to yield the predictable result discussed in both papers: the MultiMATLAB system executing MATLAB in parallel to perform mathematical calculations. Id. at 22–23 (citing Ex. 1003 ¶ 70; Ex.1005, Abstract; Ex. 1006, 2–7). The Petition further contends that a POSITA would have found it predictable to combine Trefethen with Menon with a reasonable expectation of success” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,570,034 - Apple Inc. v. Resonant Systems, Inc.All claims unpatentablePTAB · Oct 9, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Final written decision
Claims 2 and 3 are unpatentable under § 103 over Gregorio, Ramsay, Tierling, Rossi, and Aldrich; claim 2 is also unpatentable over Gregorio, Ramsay, Wakuda, Rossi, and Aldrich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” See PO Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; PO Resp. 7. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionTerm construed board ownMixed
“supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.10 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs configured to operate a switch or other circuit; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law that limits the structure to that necessary to 10 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:7–10. perform the claimed function. 11 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“The record, including testimony by Dr. Hannaford (Ex. 1003; Ex. 1049), supports Petitioner’s rationale, and shows that one of ordinary skill would have been motivated to combine Gregorio, Ramsay, and Wakuda in the manner proposed. Patent Owner does not address Petitioner’s showing for combining these references with any particularity. See generally PO Resp. We discuss below Patent Owner’s argument that Petitioner’s showing as to limitation 2.f based on the combination of Gregorio and Ramsay is conclusory.” slip op. at 34
Patent outcomesUS 8,860,337 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,860,337 - PTAB · Aug 29, 2025 · IPR2025-00479 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over Erskine, Scherzer, or Scherzer and Gillett.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“III. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’634 patent challenged in the Petition. Therefore, we do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’634 patent (July 2018), a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar major with at least two years of experience in the field; or a master’s degree with specialization in the field,” where “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 7 (citing Ex. 1003 ¶¶ 12–13). Petitioner further argues that a person of ordinary skill in the art would have had knowledge of “[d]esigning and using systems that include endpoint devices (e.g., client devices) and servers for establishing network connections and data transfer,” “[r]ecognizing and applying the client-server architecture,” and “[u]sing and applying concepts from known telecommunication and networking frameworks, protocols and standards, including TCP/IP, IEEE 802.11, VoIP, cellular systems and other known frameworks and standards.” Id. (citing Ex. 1003 ¶ 14). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’634 patent and the types of problems and solutions described in the ’634 patent and cited prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, col. 1, ll. 4–29 (describing in the “Background” section of the ’634 patent a “network connection between two endpoints” and known methods of reaching “full effective bandwidth capacity” in a network).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner notes that it proposed a construction for the claim term “geographical area” in the district court case, but states that it “do[es] not believe proposing a construction for the term is necessary in this proceeding because the relied upon teachings of the prior art references are consistent with examples of ‘geographical area’ included in the ’634 patent [S]pecification.” Pet. 8. Patent Owner argues that “[t]he Board need not engage in express claim construction at this stage of the proceeding.” Prelim. Resp. 5. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- BurdenNot shown unpatentable
“Petitioner has not shown sufficiently that Erskine teaches or suggests the second requirement of limitation [1c], i.e., “initiating the next network connection . . . with a transmission bandwidth based on the parameter values for the past network connection.” Petitioner’s theory is that (1) the QoS parameters in Erskine are for a “past” connection from one zone to another, (2) the sliding maximum interzone bandwidth is “based on” the QoS parameters, and (3) a new call only proceeds if the transmission bandwidth needed for the call added to the current bandwidth being used over the interzone link is less than the sliding maximum interzone bandwidth, so Erskine therefore teaches a call with a transmission bandwidth determined “based on” the sliding maximum interzone bandwidth (which in turn is determined “based on” the QoS parameters). See Pet. 27–28; Ex. 1003 ¶¶ 59–60 (similar testimony from Dr. Crovella). As Patent Owner points out, however, Erskine only makes “a binary, accept/reject decision as to whether to allow a new call to proceed based on a comparison between the bandwidth needed for the call and a predetermined ‘sliding maximum interzone bandwidth value.’” See Prelim. Resp. 6–7. Specifically, the additional bandwidth that would be needed for the call is added to the current bandwidth being used on the interzone link; if the sum of those values is less than the sliding maximum interzone bandwidth for the link, the call “proceeds”; otherwise, it is “blocked.” Ex. 1004, col. 4, ll. 36–40, col. 6, l. 55–col. 7, l. 10, col. 8, ll. 36–43, col. 9, ll. 9–26, col. 10, ll. 23–25 (the sum is compared to the sliding maximum interzone bandwidth “to determine whether enough bandwidth is available to proceed with the new call”), Fig. 3 (steps 308, 310, and 312). Erskine repeatedly refers to the bandwidth for the new call as the amount of bandwidth that is “necessary” or “required” to handle the call. See, e.g., id. at col. 1, ll. 43–57 (“an amount of bandwidth necessary to handle the new call”), col. 6, ll. 61–64 (“the additional bandwidth required (of the new call)”), col. 8, ll. 36–40 (“the bandwidth necessary for the new call”), col. 9, ll. 16–21 (“the anticipated additional bandwidth necessary for the new call”), 54–56 (“the bandwidth amount the new call will utilize (if connected)”), col. 10, ll. 21–23 (same), 41–43 (same), col. 12, ll. 1–2 (“an amount of bandwidth necessary to handle the new call”). It is that value—determined prior to the addition and comparison to the sliding maximum interzone bandwidth—that will be used for the new call if it is allowed to “proceed[].” Id. at col. 6, ll. 64–67 (if the sum is less than the sliding maximum interzone bandwidth, the call “proceeds” and “the QoS table is updated with the additional bandwidth used by that call”). Erskine does not describe the transmission bandwidth for the new call as being based on any parameter values for a past network connection, but rather as “whatever bandwidth the system determined is necessary for the additional call.” See Prelim. Resp. 8–9. In other words, the transmission bandwidth needed for a new call is predetermined and independent of whatever the sliding maximum interzone bandwidth is currently. See id.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,944,634 - PTAB · Aug 13, 2025 · IPR2025-00430 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5–9, 13–15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Rose.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion as to Claim 1 For the reasons discussed above, and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 1 would have been obvious over Rose. 3. Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Rose, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review”); 37 C.F.R. § 42.108(a).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed level of skill. Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition.” slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– 21. Moreover, the claims recite that the modules are stored in a computerreadable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - PTAB · Jun 10, 2025 · IPR2025-00299 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Kircher and Krug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any 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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this 6 The current record does not include allegations or evidence of objective indicia of nonobviousness. proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). However, the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Although the specification broadly defines “module,” the language of the claims better supports Patent Owner’s argument that the computer program module limitations connote structure in the form of software instructions or code. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 22–24; Ex. 2003 ¶¶ 15–28). Specifically, claim 1 recites a computer-readable storage medium storing computer program modules configured to execute on the computer processor, the computer program modules comprising. . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Ex. 1001, 47:30–32. And, claim 6 recites the computer-program product having a computer-readable storage medium having computer program instructions encoded thereon comprising . . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– readable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“That is, Petitioner asserts that the claim requires only one of “a local importance,” “a global importance,” “a content relevance,” or “one or more actions on the piece of electronic content.” Id. We adopt Petitioner’s construction, which Patent Owner does not dispute at this stage in the proceeding. See Prelim. Resp. The claimed determination is “based at least in part on one or more measures derived from the group” members listed. As such, the claim language is clear that only one member of the group, i.e., one of limitations 1[g][i]–1[g][iv], is required to meet the claim. Independent claims 6 and 7 recite similar limitations as claim 1, and for purposes of institution, we adopt Petitioner’s claim construction for those similar limitations. See Ex. 1001, 48:35–46, 49:1–11.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15
- Skill levelDecided for patent owner
“Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,856,520 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01481 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), based on its Fintiv analysis, including the earlier district court trial date and weakness in the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“date in the Lenovo Group case as the main indicator of a trial court reaching the merits of the invalidity of the patent-at-issue before we issue a final written decision. Accordingly, this factor strongly favors discretionary denial of the Petition.” slip op. at 11
- Skill levelSkill level board ownOther
“patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and three years of experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces.” Pet. 6. Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications.” Prelim. Resp. 6–7. The differences between the definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “does not believe that any specialized constructions are necessary.” Pet. 6. Patent Owner “does not disagree.” Prelim. Resp. 6. However, Petitioner’s challenge raises an implicit claim construction issue not addressed in the Petition that we discuss in our analysis below.” slip op. at 15
- BurdenNot reached
“example, claim 11 recites “receiving a synchronization symbol by a receiver indicating a packet type, each packet type having a different synchronization symbol.” Ex. 1001, 37:53–55. The other independent claims challenged in the Petition are similar in their recitation of a “synchronization symbol.” See id. at 37:9 (claim 1), 38:26–27 (claim 19). Petitioner argues this limitation is disclosed by Auld in view of MPEG-2 Part. 1. Pet. 15–16. Citing Figure 5 of Auld, reproduced in Section IV.C.1, supra, Petitioner asserts that “[t]he ‘sync codes’ in Auld consist of sequences of symbols that are used for synchronization, and therefore qualify as synchronization symbols.” Id. at 17. Patent Owner responds that “what the Petitioners identified as a ‘synchronization symbol’ [in Auld] is in what they have identified as a ‘packet of (or having) symbols.’” Prelim. Resp. 1. In contrast, “[i]n the specification and claims of the ’798 Patent, the claimed ‘synchronization symbol’ is separate from, and precedes, the claimed ‘packet of (or having) symbols.’” Prelim. Resp. 1. In disputing Petitioner’s identification in Auld of a synchronization symbol as claimed, Patent Owner points to Figure 9A of the ’798 patent (reproduced in Section II.C, supra), showing synchronization primitives 901 and 905 as separate from and transmitted before packets 902 and 907, respectively. Id. at 4. Patent Owner also relies on the description of the Figure 9A embodiment in the ’798 patent specification. Id. at 3–5. That description places transmission of the synchronization primitive encoded with the patent type before the control packet in the transmission sequence:” slip op. at 18
Claim constructionDiscretionary denialPatents in suitUS 7,746,798
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.