- Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.Some claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01111 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–4 and 8–13 are unpatentable as obvious over Gallagher and Schofield; claims 5–7 and 14–16 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed
“As a general rule, unless the steps of a method claim actually recite an order, the steps are not ordinarily construed to require one.” Mformation Techs., Inc. v. Rsch. in Motion Ltd., 764 F.3d 1392, 1398 (Fed. Cir. 2014) (citation modified). “However, a claim requires an ordering of steps when the claim language, as a matter of logic or grammar, requires that the steps be performed in the order written, or the specification directly or implicitly requires an order of steps.” Id. (cleaned up). “[O]rdinarily in process claims steps taken concurrently are the equivalent of steps taken successively.” In re White, 39 F.2d 974, 975 (CCPA 1930); see also Cybersettle, 243 F. App’x. at 609 (finding “the step of calculating the differences between demands and offers can occur concurrently with the [next enumerated step of] receipt of multiple demands and offers” and “the testing step of ‘determining whether any of the differences fall within the predetermined settlement range’ may occur concurrently with the receipt and comparison of the bids” (citation modified)). This is especially true here, given that the recitations at issue are functional language in an apparatus (system) claim. We further agree with Petitioner that the ’328 patent discloses such concurrent performance of these steps: Either concurrent with or subsequent to the identification of road signs 30 and generation of asset management database 24, the computer processor 22 evaluates that portion 32 of each video frame or image that depicts a road sign 30 to determine a set of color values 40, 42 for each of a plurality of colors on the road sign 32. A retroreflectivity value is generated for each color portion 34, 36 on each frame of the tagged videostream 20 containing the road sign 30 that represents a different color value 40, 42. Ex. 1001, 5:52–60. Thus, the ’328 patent discloses concurrently detecting objects of interest (road signs) and determining whether the object of interest has a particular color value. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner is correct to the extent that it need not show that “the features of [Schofield] may be bodily incorporated into the structure of [Gallagher],” but Petitioner must prove that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention.” Allied Erecting, 825 F.3d at 1381. For claim 9, Petitioner proposes to modify Gallagher’s system to use “Schofield’s determination of a light source’s location within a field of view” in Gallagher’s system. Pet. 23. Thus, Petitioner’s combination does not require the combination of Gallagher’s and Schofield’s sensors into a single system, and Patent Owner’s “sensor fusion” argument is inapposite. See Tr. 48:8–49:6 (Patent Owner’s counsel confirming that the problem of “sensor fusion” stems from combining disparate sensors in a single system). As noted above, Schofield teaches considering the relative location of the light source in determining whether the light source is from headlights or taillights (that is, an object of interest). See Ex. 1006, 9:26–35. We are persuaded that an ordinarily skilled artisan would be motivated to use this teaching in Gallagher’s device to help distinguish between road markers that are arranged side-by-side and have a reasonable expectation of success in doing so. See Ex. 1005 ¶ 40; Ex. 1003 ¶¶ 77 (“[An ordinarily skilled artisan] would have seen Schofield’s determination of a light source’s location within the field of view as advantageous because it would have allowed Gallagher’s computer to associate the measured reflectance level with the appropriate road marker.”), 79 (“[I]mplementing this determination would have required [an ordinarily skilled artisan] to implement only conventional techniques of image processing (identifying a location of a particular pixel within an array), which was well known by [an ordinarily skilled artisan], to predictably yield the result of the location within a field of view indicating an intensity value associated with a road marker. Given that Schofield and Gallagher disclose similar types of arrays, this combination would have merely required the use of Schofield’s known technique to improve Gallagher’s similar device in the same way.”).” slip op. at 30
- Expert testimonyPatent owner expert discountedOther
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 21. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 11
Patent outcomesUS 9,671,328 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,671,328 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.No claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Final written decision
Claim 15 was not shown unpatentable under § 103 over Gallagher and Lumia because Petitioner did not persuasively explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. As noted by Petitioner, Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 23. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we determine that no construction of any term is necessary. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not articulated persuasive reasoning for combining the teachings of Gallagher and Lumia. Petitioner argues that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels for countries that require a minimum retroreflectivity level for road markers. Pet. 46 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 49, 77; Ex. 1019, 6, 8–11).7 However, Gallagher already discloses determining whether the 7 Petitioner and Dr. Thorpe cite to the original pagination of Exhibit 1019 rather than the added exhibit pagination. reflectance level of each road marker meets a predetermined minimum acceptable reflectance level and tagging those road markers that do not meet the minimum acceptable reflectance level to identify them for replacement. See, e.g., Ex. 1005 ¶¶ 3, 67–68; see also id. ¶¶ 12–13, 18, 21, 49, 51, 76, 79, Fig. 5. Indeed, both Petitioner and Dr. Thorpe describe Gallagher’s system as ensuring that road markers meet minimum retroreflectivity standards: “Gallagher’s apparatus tests ‘road markings and road markers such as, for example, road signs and posts, reflective painted lines whether continuous or broken, and . . . raised pavement markers’ ‘to ensure they continue to meet minimum standards of reflectivity/retroreflectivity.’” Pet. 9 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33); Ex. 1003 ¶ 55 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33). Thus, we agree with Patent Owner that Petitioner has not identified persuasively why an ordinarily skilled artisan would have modified Gallagher’s system to include Lumia’s process for measuring retroreflectivity of traffic signs.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“coefficient of luminous intensity rather than the coefficient of retroreflectivity, and Lumia teaches how to calculate retroreflectivity based on the coefficient of luminance intensity. Pet. Reply 20–21. During the hearing, counsel for Petitioner clarified that this reliance on Lumia entails using the equations disclosed in Lumia without altering Gallagher’s hardware. Tr. 27:18–29:24. During his deposition , Dr. Thorpe confirmed that this obviousness theory relies only on Lumia’s equations. See Ex. 2025, 60:5–65:2. This is an improper new argument. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”). Notably, this new obviousness theory appears to stem from Patent Owner’s witness, Dr. Papanikolopoulos, noting differences in Gallagher’s and Lumia’s disclosures. See Pet. Reply 21 (citing Ex. 2023 ¶¶ 71 n.2, 89).” slip op. at 20
Patent outcomesUS 9,335,255 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,335,255 - Deere & Company v. David’S Dozer V-Loc System, Inc.Institution deniedPTAB · Mar 18, 2025 · IPR2024-01442 · APJ Robert J Silverman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any other authorized submissions) “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.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposal for the level of ordinary skill in the art differs from that of Petitioner, primarily because Patent Owner contends that such a person of ordinary skill would have a certain degree of experience relating specifically to skid steers, or similar machinery, and their hydraulic systems. See Prelim. Resp. 8–10 (citing Ex. 2001 ¶ 31). Insofar as we understand the significance of Patent Owner’s concerns about the differences between the parties’ proposals, these differences do not bear upon the issues addressed herein. Accordingly, for the purposes of the present Decision, we adopt Petitioner’s proposed definition of the relevant level of ordinary skill in the art. Further, with regard to the issues addressed in this Decision, Petitioner’s proposed description of the level of ordinary skill in the art appears to be consistent with the level of skill indicated by the ’300 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner. Petitioner argues that “Patent Owner made the deliberate choice to claim broadly,” eschewing “structural limitations that would have expressly or implicitly required the hydraulic of Element [1.4] to differ from the hydraulic of Element [1.5].” Reply 7. Further, Petitioner argues that “Patent Owner chose to generically recite ‘a hydraulic’ in each of Elements [1.4] and [1.5] without distinguishing labels, identifiers, or qualifiers.” Id. To the contrary, the two recited “hydraulic[s]” are distinguished by the language surrounding and modifying each instance in the method of claim 1. Indeed, the recitations of distinct operations performed by each “hydraulic,” in the claimed method, further support the understanding these are distinct and different structures. Additionally, as Patent Owner contends (see Prelim. Resp. 16), each instance of “hydraulic” is introduced with the indefinite article “a” — a signal that the two instances of “a hydraulic” do not refer to the same structure. See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“As Patent Owner argues, Petitioner’s proposed combination of Funk and Lewis “would interfere with the intended operation of the Funk control system to move the lift arms up and down in response to inter alia changes in the height signal.” Prelim. Resp. 20. This scenario is similar to that in Tec Air, 192 F.3d at 1356, which involved a claimed injection-molding technique that used screw-threaded adjustable plugs accessed from the inner, cavity-facing, side of the mold. The proposed combination included a prior art reference disclosing adjustment members accessed from the opposite, outer, side of the mold, and having a non-threaded smooth tip that extended through the mold and into the cavity. Id. at 1360. The Federal Circuit held that the prior art reference was properly determined to teach away from the claimed invention, because “no screw driver would be able to turn the smooth-headed screws from the cavity-side of the mold,” hence the proposed “combination would be inoperable for its intended purpose.” Id. Likewise, the proposed combination in the present matter teaches away from the subject matter of claim 1, because it would “immobilize [Funk’s] main arm,” and its associated hydraulic cylinder 18, “leaving just ‘one’ of Funk’s two adjustment mechanisms — blade tilt — available for grade control” (Pet. 10), thereby decreasing the system’s accuracy (see Ex. 2001 ¶¶ 113– 14) and negating the very technique that Funk relies upon to achieve its stated goal. See Ex. 1004 ¶ 7 (“[O]ne object of the present invention is to provide an automatic leveling control system that is sufficiently accurate for preparing the ground prior to the construction of concrete floors and foundations.”)” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Markman · KSR · GrahamPatents in suitUS 10,533,300 - PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . 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 considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,561,104 - Head Sport GmbH v. Vermont Safety Developments LLCInstitution deniedPTAB · Jan 15, 2025 · IPR2024-01099 · APJ Barry L Grossman · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show that the prior art met the claims under the Board’s construction of “release logic.”
RulingsInstitution decision- Other 314aNot reached
“Thus, based in part on the “relatively minimal proceedings” in the District Court, and the “[t]he possibility of significant simplification” for the District Court from our claim construction of the term “release logic,” we decline Patent Owner’s invitation to discretionarily deny the petition. Moreover, we need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, Petitioner has not established a reasonable likelihood of prevailing on the merits in demonstrating unpatentability of any challenged claim of the ’953 patent. See MillerKnoll, Inc. v. Aaron DeJule, IPR2023-01428, Paper 8, 10 (PTAB March 22, 2024).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We now turn to the merits of Petitioner’s asserted Grounds of unpatentability. Analysis of Claims We focus our analysis on the term “release logic,” which appears in all the challenged claims. As we explained above, we determined that the term “release logic” along with its recited functions should be construed under Section 112 ¶ 6 to cover “corresponding structure, material, or acts described in the specification and equivalents thereof,” that perform the recited functions. Petitioner did not identify how the asserted prior art described those structures or their equivalents. Instead, as discussed above, Petitioner relied on Patent Owner’s preliminary construction in the District Court, which Patent Owner identified in wholly functional terms as a “specific sequence of actions.” Pet. 6 (citing Ex. 1010; Ex. 1002 ¶¶ 52–53); Prelim. CC Reply 1 (citing Ex. 1010, 5). Thus, Petitioner’s analysis fails to address how the prior art meets the limitations set forth in the claims as we have interpreted those claims. Accordingly, we find that Petitioner has failed to meet its burden to establish a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition. Thus we deny institution of an inter partes review. See Samsung Elecs. Am., Inc. v. Cobblestone Wireless, LLC, IPR2024-00319, Paper 16, slip op. 16–23 (PTAB Jun. 24, 2024) (holding that because Petitioner’s obviousness showing was based on an incorrect claim construction, Petitioner did not demonstrate a reasonable likelihood that a claim limitation was disclosed by, or would have been obvious over, the cited reference).” slip op. at 49
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“be persuasive, we conclude that an ordinarily skilled artisan would not have understood “release logic” to refer to, or to have a definite meaning as the name for structure. Accordingly, we find that any presumption that the claims at issue do not invoke § 112, ¶ 6 is overcome, and we conclude that “release logic” introduces claim language that is properly interpreted under § 112, ¶ 6. Dr. Hull’s testimony in the District Court appears to address only the embodiment disclosed in Figures 9–11 of the ’953 patent. He did not opine on the other embodiments disclosed in the patent, such as the embodiment in Figures 22–24 disclosing electronic third-quadrant release-logic binding system 2204. However, his testimony that the words of the claim would not be understood by an ordinarily skilled artisan to have definite meaning as the name for structure remains persuasive.” slip op. at 48
- Skill levelSkill level patent owner adoptedDecided for patent owner
“sophistication of the technology; and (5) educational level of active workers in the field.” Id. ¶ 30. Dr. Hull fails to state whether these factors were relied upon in forming his opinion, and if so, he also fails to state the underlying facts or data relating to these factors on which the opinion is based. There is no evidence to support why an “advanced degree” in mechanical engineering and five years of relevant experience is required. His opinion is supported only by his statement that he is “familiar with the technology at issue here and the state of the art at the time the application leading to the ’953 patent was filed.” Ex. 1002 ¶ 31. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Here, based on Dr. Hull’s extensive experience, we give his testimony some, but little, weight. Patent Owner states that “for purposes of this Preliminary Response only, VSD does not now dispute the definition of the POSITA as set forth by Dr. Hull.” Prelim. Resp. 7. We note that Patent Owner’s position is based on Dr. Hull’s full testimony, not the excerpt asserted by Petitioner. Accordingly, for purposes of this Decision, and based on the limited record before us, we determine, based on Dr. Hull’s testimony, the cited prior art, and Patent Owner’s qualified agreement with Dr. Hull’s testimony, that a person of ordinary skill in the relevant technology would have had an advanced degree in mechanical engineering or a related discipline and five years of experience in either ski binding design, manufacture, or testing; research concerning ski bindings and related equipment; or the development of standards concerning ski bindings or related equipment. This level of skill is approximate, and more experience would compensate for less formal education, and vice versa.” slip op. at 25
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,953 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855
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.