• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentable
  PTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and 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). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13

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

    “Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62

  Patent outcomesUS 11,336,832 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,336,832
• Apple Inc. v. RJ Technology, LLCInstituted
  PTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution

  The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may not be instituted “unless . . . the 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) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7

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

    “Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 7,749,641
• Infineon Technologies AG v. Amatech Group LimitedRehearing granted
  PTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing

  On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6

  • Skill levelSkill level petitioner adoptedOther

    “As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4

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

    “unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6

  § 103 obviousness
  Patents in suitUS 9,165,240
• Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgment
  PTAB · Feb 9, 2023 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Adverse judgment

  The Board entered adverse judgment against Patent Owner and cancelled claim 1 based on statutory disclaimers; alternatively, it held claim 1 unpatentable on every asserted ground.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6

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

    “In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8

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

    “To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9

  • BurdenUnpatentable

    “We conclude that Patent Owner has forfeited any arguments opposing the information advanced in the Petition with respect to the other asserted grounds of invalidity. We adopt the reasoning set forth in the Petition with respect to those grounds. See Pet. 23–45 (arguments and evidence directed to publication and accessibility of SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent), 73–88 (arguments and evidence directed to the grounds that assert SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent). On this record, Petitioner demonstrates by a preponderance of the evidence that the subject matter of the challenged claim would have been obvious based on the other grounds asserted in the Petition. Id.” slip op. at 9

  § 102 anticipation§ 103 obviousness
• Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgment
  PTAB · Feb 9, 2023 · PGR2022-00031 · APJ Grace Karaffa Obermann · PGR · Adverse judgment

  Adverse judgment was entered after Patent Owner disclaimed the sole claim; alternatively, the claim was held unpatentable on the asserted anticipation and obviousness grounds.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “On October 5, 2022, Patent Owner filed a statutory disclaimer of the first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6

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

    “In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8

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

    “To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9

  § 102 anticipation§ 103 obviousness
• Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Jun 10, 2022 · IPR2021-01230 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable under §103 based on How-767 and Feild; the Board did not reach the other listed grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “review. Paper 6 (“Institution Decision,” “Dec.”). Following institution, STMicroelectronics filed a petition for inter partes review and a Motion for Joinder in IPR2021-01230, requesting that STMicroelectronics be joined as a petitioner in IPR2021-00130. STMicroelectronics, Inc. v. Monterey Research, LLC, IPR2021-01230, Papers 1, 3. We instituted trial in IPR2021-01230, granted the Motion for Joinder, and added STMicroelectronics as a petitioner to IPR2021-00130. Id., Paper 7. A copy of that decision was entered in the record of IPR2021-00130. Paper 15.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11

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

    “claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner’s Reply argument is not responsive to Patent Owner’s argument that a person of ordinary skill in the art would not have been motivated to integrate a standalone flash memory within an ASIC. See PO Resp. 75 (citing Ex. 2002, 53:25–54:3). Instead, Petitioner’s Reply arguments appear to proceed in a new direction with a new approach as compared to the positions advanced in the Petition. Accordingly, Petitioner’s new and non-responsive Reply arguments exceed the proper scope of a reply and have not been considered in rendering this Final Written Decision. See CTPG 73–74.” slip op. at 83

  Patent outcomesUS 6,459,625 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,459,625
• Stmicroelectronics, Inc. v. Monterey Research, LLCAll claims unpatentable
  PTAB · Jun 10, 2022 · IPR2021-00130 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–12 and 14 are unpatentable under § 103 based on the grounds shown in the decision’s conclusion table.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 STMicroelectronics, Inc. was joined as a petitioner in this proceeding based on a petition and motion for joinder filed in IPR2021-01230, which were granted. These proceedings were terminated as to petitioner Qualcomm Incorporated. See Paper 37.” slip op. at 1

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “regarding the definition of a person of ordinary skill in the art. Accordingly, we again adopt Petitioner’s definition as it is consistent with the level of skill reflected by the ’625 Patent Specification and the asserted prior art.” slip op. at 11

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

    “claims 1 and 6 are limited to a flash memory; (2) the preamble of claim 10 is limited to a memory device; and (3) a “periphery area” is “an area outside the core memory cell area.” Accordingly, we adopt the parties’ construction that the preambles of claims 1 and 6 are limited to a flash memory, the preamble of claim 10 is limited to a memory device, and a “periphery area” is “an area outside the core memory cell area.” We do not need to further construe these claim terms in order to address the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19

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

    “does not explain how any of the supposed advantages of Feild are relevant to How-767 or how the combination would achieve these supposed advantages. Petitioner identifies reducing fabrication steps, eliminating polishing steps, and high electromigration performance as benefits of Feild’s fabrication method. See Pet. 63 (citing Ex. 1011, 2:48–3:10; Ex. 1006 ¶ 149). Dr. Lall’s cited testimony identifies these advantages compared to the prior art techniques discussed in Feild that use additional polishing steps, multiple-step processing, and the use of chemical mechanical polishing. See Ex. 1006 ¶ 149 (citing Ex. 1011, 2:16–32, 2:20–30, 2:48–3:10). Petitioner also asserts that How-767 presents Figure 1 as an exemplary cross-sectional view of a generic integrated circuit and never suggests that the precise structure of Figure 1 is required. See Pet. 65 (citing Ex. 1003, 1:21–22). On this basis Petitioner contends that a person of ordinary skill in the art would have understood that other cross-sectional interconnection arrangements could be used. See id. (citing Ex. 1006 ¶ 152). Petitioner asserts that a person of ordinary skill in the art would have understood that forming How-767’s routing structure according to the interconnect structure taught by Feild would involve a simple substitution of Feild’s cross-sectional interconnect structure for How-767’s exemplary cross-sectional interconnect structure to obtain predictable results. See id. (citing Ex. 1006 ¶ 153). Accordingly, we understand that Feild’s advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance would be achieved by forming How-767’s routing structure according to Feild’s cross-sectional interconnect structure. In sum, based on the entire trial record, we determine that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify How-767 by “forming How-767’s routing structure according to the interconnect structure taught by Feild” in order to obtain the advantages of reducing fabrication steps, eliminating polishing steps, and high electromigration performance. See Pet. 62–65 (citations omitted); KSR, 550 U.S. at 418.” slip op. at 76

  Patent outcomesUS 6,459,625 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,459,625
• Stingray Digital Group Inc. v. Music ChoiceSome claims unpatentable
  PTAB · Oct 11, 2018 · IPR2017-01191 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–4 and 6–9 are unpatentable as obvious over Hudson and Dwek; claims 5 and 10–20 were not shown unpatentable because the references do not disclose the genre channel limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner contends a person of ordinary skill in the art pertaining to the ’045 patent, at the time of invention, “would have had at least an undergraduate degree in computer science or electrical engineering, or equivalent experience and, in addition, two years of experience in distribution of digital audio and video via networks.” Pet. 5 (citing Ex. 1003 ¶¶ 11–17). Patent Owner agrees. PO Resp. 6. In considering the issues presently before us, we have adopted and applied Petitioner’s proposed identification of the level of ordinary skill in the art, which is consistent with the ’045 patent and the asserted prior art.” slip op. at 8

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

    “B. CLAIM INTERPRETATION “A claim in an unexpired patent that will not expire before a final written decision is issued shall be given its broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to Rule 42.100(b)). When applying that standard, we interpret the claim language as it would be understood by one of ordinary skill in the art in light of the specification, and absent any special definition, we give claim terms their ordinary and customary meaning. See In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010); In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary meaning is the meaning that the term would have to a person of ordinary skill in the art in question.” (internal quotation marks omitted)). Only terms which are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the Decision on Institution, we instructed the parties to brief the meaning of “a message comprising information indicating that the user desires to view the video identified by the video identifier” as recited in claims 1 and 6; and “in response to receiving the message” as recited in claims 1 and 6. Dec. 24. The parties agreed upon the express meaning of both phrases, PO Resp. 6–7; Reply 2, which we adopt for the purposes of this Final Written Decision. We discern no need to interpret any other phrase expressly for the purposes of this Final Written Decision.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Ricoh Co., Ltd. v. Quanta Comput. Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)). Moreover, a reference “must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.” Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 296 (Fed. Cir. 1985) (citation omitted). A reference does not teach away “if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy, 567 F.3d at 1327 (quoting In re Fulton, 391 F.3d at 1201). But even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Against this background, we determine that Hudson does not teach away from incorporating the ability to customize playlists as described by Dwek. Hudson never expressly mentions permitting a user to customize its storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to slip op. at 18

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “storyboards much less disparages doing so. Dr. Shamos testifies that an ordinarily skilled artisan would have recognized that Hudson’s advantages of providing links to ancillary content along with primary content would be further enhanced if users also had Dwek’s ability to customize the primary content they were viewing. Ex. 1003 ¶¶ 43–46. Dr. Russ’s conclusions otherwise fail to consider each of Hudson and Dwek as a whole, but instead focus narrowly upon specific implementations of delivering media in each reference. Ex. 2109 ¶¶ 49–52. When Hudson and Dwek are considered as a whole, the similarities in their goals suggests their combination. For example, Hudson, by incorporating Headings by reference,3 recognizes that its system is compatible with streaming a wide variety of content including “movies, music videos, educational content, television shows, games, live events, and advertising.” Ex. 1005 ¶ 27. Similarly, Dwek recognizes that its system may deliver more than music; it may also “deliver video or other streaming multimedia content.” Ex. 1006, 4:10:12. Patent Owner argues that because Dwek describes joining a customized, shared channel “in progress,” Dwek’s system only broadcasts streams in a manner akin to live radio. PO Resp. 17. However, Dwek also contemplates starting playback of its user-defined shared channels at the beginning of the user-defined playlist. Id. at 11:27– 33. Based on our review of Hudson and Dwek, we determine that they both describe systems in which users have some degree of control over what content they consume and when they consume it. Ex. 1004 ¶¶ 37–40, Figure 4; Ex. 1006, 1:31–50. We also determine that both systems are designed to facilitate commerce related to the content. Ex. 1004 ¶ 41, 44; Ex. 1006, 3:28–57. Based upon our consideration of Hudson and Dwek as a a whole, we credit the testimony of Dr. Shamos over that of Dr. Russ and conclude that Hudson does not teach away from permitting a user to 3 Ex. 1004 ¶ 27. customize its content storyboards in a manner akin to Dwek’s customization of musical playlists.” slip op. at 18

  Patent outcomesUS 9,351,045 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,351,045
• Grit Energy Solutions, LLC v. Oren Technologies, LLCNo claims unpatentable
  PTAB · Jun 13, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–3 and 5 were not shown unpatentable over Eng Soon and Constantin; claims 4, 6, and 7 were not shown unpatentable over Eng Soon, Constantin, and Olson because the asserted combinations were not adequately …

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Mr. Smith, on the other hand, testifies that Constantin does not disclose an actuator having a receptacle and “Petitioner and Dr. Wooley’s argument that Constantin teaches that one could switch the location of stud 15 and orifice 16 is not supported.” Ex. 2040 ¶¶ 65–66. Mr. Smith further testifies that “Constantin does not describe the location of stud 15 and orifice 16 as a ‘preferred embodiment.’ . . . Constantin’s disclosure does not disclose or suggest that stud 15 could be switched for orifice 16 on the other shutter blade.” Id. ¶ 68. Having considered Petitioner’s and Patent Owner’s competing evidence and argument, we agree with Patent Owner and credit Mr. Smith’s testimony. Specifically, we find that Petitioner has not shown that Constantin teaches, discloses, or suggests its orifice as being attached to its actuator, as Petitioner asserts. See Pet. 49. Petitioner’s assertion is premised on a misapprehension of Constantin’s claim 5.” slip op. at 21

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

    “Having established that Constantin does not teach, disclose, or suggest an orifice attached to its actuator, we also find unpersuasive Petitioner’s argument that a POSITA would have modified Eng Soon’s structure so as “to fix the pin on the bottom of the gate as taught by Constantin.” Pet. 54 (emphasis added). Because Petitioner has not shown Constantin teaches or suggests such structure and has failed to provide adequate explanation for why one would have modified Constantin, Petitioner’s reasoning is insufficient.” slip op. at 22

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “The Board may, for good cause, issue an order to protect a party or person from disclosing confidential information.” 37 C.F.R. § 42.54(a). Upon considering the content of the Exhibits, including those redacted versions, and Petitioner’s representations as to the confidentiality of the information, we determine that Petitioner has shown good cause for sealing Exhibit 1016 in its entirety and the redacted portions of the Exhibits 2010, 2012, 2013, 2020–2024, 2029, 2032, 2033, 2039, and 2044, which redacted versions have been submitted as Exhibits 1025–1037. Id. at ii. slip op. at 27

  Patent outcomesUS 8,585,341 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 8,585,341
• Westerngeco LLC v. PGS Geophysical AsRehearing granted
  PTAB · Feb 3, 2017 · IPR2015-00313 · APJ Justin Busch · IPR · Rehearing

  On rehearing, the Board held claim 2 unpatentable as anticipated by Gallagher, modifying the final written decision; no other aspect was modified.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “On rehearing, the burden of showing the Decision should be modified lies with the party challenging the Decision. 37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id. For the reasons that follow, Petitioner’s request for rehearing is granted. This decision on rehearing modifies our Final Written Decision only to the extent that we now hold claim 2 of the ’059 patent to be unpatentable as anticipated by Gallagher. Neither party challenges our holdings with respect to any other claims in our Final Written Decision.” slip op. at 2

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

    “Owner, and Petitioner does not contest, that traces “have the same coordinates” when those traces populate the same bin in the “set of bins.” We agree with Petitioner, however, that the disputed limitation is tied to the assignment of coordinates, not to the organizing step, and we are unpersuaded by Patent Owner’s arguments that a trace can only populate a particular bin after “the coordinate-designated set of traces” has been organized.” slip op. at 6

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

    “interpreted properly (i.e., not tied to the organizing step), Gallagher teaches or suggests the disputed limitation. Req. Reh’g 5–6. We found persuasive Petitioner’s mappings of (1) Gallagher’s assignment of sections and shells in a common reference point bin to the assigning step, (2) the section-shell segments created from that assignment to the recited set of bins, and (3) Gallagher’s decimation process, which in one example leaves one trace per section-shell segment (or bin), to the organizing step. Dec. 14–19; see Pet. 45–48. In Gallagher, it is the combination of the acquisition geometry and the selection of the sections and shells that defines the coordinate-designated set of traces and the bins. Prior to Gallagher’s decimation,” slip op. at 10

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 6,026,059

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.