• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00710 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–7, 9, 13, and 16–20 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 8 was not shown unpatentable under either ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicates that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction. Thus, no express construction is required.” Pet. 13 (citing Ex. 1003 ¶ 86). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

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

    “rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “and reliance on Figure 19 do not in any way explain how updating game costs by meter 502 with a new Cost_Table is relevant to a credit multiplier or even a multiplier being varied over time. Ex. 1003 ¶ 155. Considering this evidence, we determine that Petitioner and Mr. Crevelt’s reliance mainly on snippets from Schneier’s “Updating Cost Information protocol” embodiment does not sufficiently explain why or how a person of ordinary skill in the art would have understood updating game cost to encompass varying a multiplier of credits over time. We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004:158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to persuasive evidence in Schneier as to how or why a person of ordinary skill in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 8.” slip op. at 20

  Patent outcomesUS 10,825,294 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,825,294
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentable
  PTAB · Oct 13, 2026 · IPR2025-00709 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 4, 6, 8, 10, 14–18, 21–23, 25, 27, and 29 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 9 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states it “does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” PO Resp. 4. Patent Owner states further that “this [Patent Owner Response] and supporting declarations apply Petitioner’s proposed level of skill.” Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7

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

    “Petitioner indicated in the Petition that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction.[] Thus, no express construction is required.” Pet. 12–13 (citing Ex. 1003 ¶ 85). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004, 158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. Id. at 161:2–6. These explanations are unpersuasive because the testimony relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 9.” slip op. at 21

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

    “Discount Credit Pricing Structure The $0.20 discount described by Schneier for purchasing 20 credits, rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not address the idea of a time component, i.e., “over time,” as required by claim 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 18

  Patent outcomesUS 10,650,635 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,650,635
• Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23

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

    “Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id.” slip op. at 32

  Patent outcomesUS 7,916,180 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,916,180
• Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Jul 21, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 22, 23, 28, 30, and 33 are unpatentable over Choi, Labaziewicz, and Yu under § 103; claims 1–3, 10–12, 24, 25, and 32 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”).” slip op. at 23

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

    “We do not agree with Petitioner’s arguments based on retrieval of data from CCD 18A and CCD 18B. Although Matsushima’s CCD drive circuits 20A and 20B are driven synchronously by timing generator 28 (see Ex. 1007 ¶ 27), Matsushima discloses that “accumulated signal charges are retrieved by CCD drive pulses applied by CCD drive circuits 20A and 20B, and are sequentially output from CCD 18A and CCD 18B as voltage signals (analog image signals) corresponding to each signal charge” (see Ex. 1007 ¶ 23) (emphasis added). In other words, regardless of whether CCD drive circuits 20A and 20B are driven synchronously by timing generator 28, Matsushima discloses that voltage signals corresponding to the accumulated 8 Petitioner’s citation erroneously includes ¶¶ 34–36 of Exhibit 1069. CCD 18A and CCD 18B sequentially––not output at the same time or simultaneously.” slip op. at 30

  • Strike new argumentNew argument disregardedDecided for patent owner

    “argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).9 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. Petitioner clarifies that the Petition does not argue inherency. See Pet.” slip op. at 33

  Patent outcomesUS 7,916,180 mixed
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,916,180
• Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Jul 1, 2026 · IPR2025-00222 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1, 2, 4, 5, 8–11, 13, and 14 are unpatentable over Yu and Miyazaki; claims 15, 16, and 19 were not shown unpatentable over Matsushima.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “at, and before, the earliest claimed priority date of the ’158 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2–3 years of experience in digital imaging systems,” adding that “[l]ess experience may be sufficient with additional education, and likewise, less education may be sufficient with additional work experience.” Pet. 6–7 (citing Ex. 1003 ¶¶ 16–18). Patent Owner does not offer a competing definition or dispute Petitioner's articulation. Based on the entire record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art because that characterization, we find, is consistent with the ’158 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “We determine that the claims require a per-channel determination of integration time—that is, an integration time arrived at for each sensor or channel individually—and cannot be satisfied by a single global value merely applied uniformly across the sensors. We do not, however, read the independent claims to require that the per-channel integration times differ from one another.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “We adopt the definition clearly and unambiguously set forth in the specification, which was likewise adopted by the Court in the related litigation. See Pet. 7–8, 55; Pet. Reply 1–2 (district court construing the term to mean “the time the image sensor collects and integrates signal from the scene”). The specification states that the integrated photo-charge “is directly related to the time the image sensor collects and integrates signal from the scene,” and that “[t]his is known as integration time.” Ex. 1001, 4:4–7. Accordingly, the ’158 patent demonstrates that the inventors indisputably acted as a lexicographer for the term “integration time.”” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We construe “during a frame” to mean the period during which data for a single frame of an image is captured. The limitation is satisfied where the per-channel integration time is effectuated during the frame; it does not require that the integration time be re-determined mid-frame, nor does it require actuation of a “charge integration switch.” The specification’s only use of the phrase confirms this reading: “each camera channel is controlled during a frame under an independent integration time.” Ex. 1001, 3:45–50. Consistent with that usage, the specification describes selecting an integration time for each channel and then integrating the photo-signal “within a single frame of data,” and describes placing the charge-integration switch in a state to allow charge to accumulate for the selected period and then transferring the accumulated charge upon completion of the integration period. Id. at 4:51–54, 11:3–18. We decline Patent Owner’s proposal to require in-frame actuation of a charge-integration switch, for the same reason we decline to import that structure into “integration time.” We also decline to read the phrase to require mid-frame re-determination of the integration time, because the patent’s own embodiment selects an integration time and then integrates charge during the frame under that selected time. Ex. 1001, 4:51–54, 11:3– 18. So construed, “during a frame” is not redundant of the independentclaim limitation: it adds that the per-channel control occurs within a single frame (intrascene), as distinct from adjustment from one frame to the next (interscene).” slip op. at 15

  Patent outcomesUS 9,232,158 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,232,158
• Bizlink Technology, Inc. v. Anderson Power Products, Inc.Some claims unpatentable
  PTAB · Nov 7, 2025 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Final written decision

  Claims 1–3 and 7–12 are unpatentable; claim 4 is not shown unpatentable because Winkler does not establish that its insulating barriers press against each other when partially disconnected.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner’s first argument that a level of ordinary skill in the art that encompasses an individual having experience with electrical circuits but not electrical connectors is not consistent with the technology and descriptions in the ’017 patent. See PO Resp. 7. The field of the invention of the ’017 patent is “electrical connectors, and more particularly, . . . an electrical connector that suppresses arcing if connected or disconnected while current is flowing.” Ex. 1001, 1:7–9. Consistent therewith, the challenged claims are directed to “[a]n electrical connector pair” and recite structural features of the electrical connector pair. Id. at 4:20–56, 5:1–20.” slip op. at 10

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

    “We find that the intrinsic evidence supports maintaining our construction in the Institution Decision that “insulating” means “electrically insulating.” See Dec. 11–12. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)).” slip op. at 15

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

    “Ex. 2001 ¶ 102. Accordingly, we find Dr. Eldering’s testimony persuasive as to this issue and determine that the diagram shows what an ordinarily skilled artisan would have reasonably inferred Winkler to disclose when the connectors are partially disconnected. Compare Ex. 1004, Fig. 2, with Pet. 33; see also Ex. 1004, 3:14–27 (discussing the process by which the connectors are engaged with each other).” slip op. at 44

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

    “Id. at 3:27–37 (emphasis added). These wall portions 58 are located between the distal ends of the terminals and where Petitioner proposes to add a printed circuit board or wiring board to Winkler. See id. at Fig. 2; Pet. 44–46 (diagrams showing Winkler as modified to have a printed circuit board or wiring board). As such, movement of Winkler’s terminals appears to be mostly limited to within their respective receiving pockets. Given the above teachings, we fail to see how Petitioner’s proposed modification would have meaningfully interfered with the degree of freedom of movement required by Winkler’s terminals. Notably, Mr. Locati’s testimony regarding this issue is conclusory. See Ex. 2001 ¶ 120. Because movement of Winkler’s terminals occurs primarily in the receiving pockets, we also do not discern how the solder joint of Petitioner’s proposed modification would experience undue stress or risk breaking due to that movement. See Ex. 1004, 1:47–55, 3:14–37, Fig. 2; Pet. 44–46. This is particularly true in view of Winkler’s teaching that each cylindrical end portion may be soldered to a cable. See id. at 2:6–10; see also Pet. 43 (arguing that Winkler teaches soldering to a cable but not specifically to a printed circuit or wiring board). Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claim 8 would have been obvious over the combined teachings of Winkler and Handbook.” slip op. at 55

  Patent outcomesUS 8,808,017 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,808,017
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00048 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited references do not teach flanges physically contacting along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

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

    “shaped portion configured to receive the structural component,” “a connection portion,” and “an extension portion,” and that “the extension portion spac[es] the channel-shaped portion from the [connection portion]” and “the channel-shaped portion, the extension portion and the connection portion are rigidly fixed with respect to one another.” Ex. 1001, 12:14–36 (emphases added). Claim 1’s repeated use of “portion[s]” to delineate between the three main elements of the hanger, i.e., channel-shaped portion, connection portion, and extension portion, shows or at least strongly suggests substantial flexibility as to the specific location where one “portion” transitions to another “portion” in the fire wall hanger. Similarly, although claim 1 recites that the “channel-shaped portion” is “configured to receive the structural component,” claim 1 recites no limitation precluding other “portions” of the hanger from also “receiv[ing]” or otherwise contacting the structural component. Patent Owner argues that “channel-shaped portion” should be construed to mean “[the] portion of the hanger that forms a channel configured to receive the structural component.” PO Resp. 19. Petitioner and its expert, Mr. Fennell, agree with this meaning (Pet. Reply 4; Ex. 1046 ¶¶ 16–20), and so do we. Indeed, claim 1 plainly recites this as discussed above. But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19.” slip op. at 33

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

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find Petitioner’s cited evidence provides sufficient rational reasons to combine Yamaguchi and Bundy to arrive at the invention of claim 1 with a reasonable expectation of success in doing so.” slip op. at 46

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Analysis Patent Owner argues, “[w]hile the asserted prior art does teach flanges or sidewalls that are in opposed relation to each other, none of Adams, Cullen, or Yamaguchi teach that these flanges or sidewalls engage each other along a juncture.” PO Resp. 42–43; see PO Sur-reply 6 (Patent Owner arguing, “Adams’s, Cullen’s, and Yamaguchi’s extension flanges are spaced well apart.”). Petitioner’s arguments to the contrary depend wholly on its proposed interpretation of the term “engaging” (Pet. 58–60; Pet. Reply 30–31), which we reject, as discussed above. Although Yamaguchi (and Cullen and Adams) may teach extension flanges in opposed, face-to-face relation, Petitioner does not explain, let alone with particularity or persuasively, how Yamaguchi’s (or Cullen’s or Adams’) flanges, which would wind up located on opposing sides of a joist (where a joist is mounted in the hanger), also teach such extension flanges engaging each other along a juncture—indeed, what juncture? See PO Sur-reply 7 (“Beyond asserting that the word ‘engaging’—standing alone—does not require ‘touching contact,’ [Petitioner] still does not address how the extension flanges of Yamaguchi, Cullen, and Adams can be said to ‘engage’ each other.”). Based on the foregoing and the complete record before us, we find Petitioner does not sufficiently establish that the combination of Yamaguchi and Bundy teaches or even fairly suggests a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall,” as recited in dependent claims 38 and 91.” slip op. at 70

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00049 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the asserted references did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the effective filing date of the ’626 patent, “would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Mechanical Engineering, Structural Engineering or a related/equivalent field and at least four years of work experience in construction connector design/development.” Pet. 11 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not dispute this assessment. PO Resp. 17–18.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

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

    “Judge Rich’s guidance from over thirty years ago: in all aspects of claim construction, “the name of the game is the claim.” In re Hiniker, 150 F.3d at 1369. Claims 38 and 91 recite, in relevant part, a fire wall hanger wherein “the first and second extension flanges engag[e] each other along a juncture, the juncture arranged to be positioned within the two layers of ⅝-inch-thick drywall.” Ex. 1001, 15:28–33, 21:41–46 (emphasis added). On its face, this limitation requires not only that the first and second extension flanges “engage” each other, but also do so “along a juncture.” This recitation of the flanges “engaging” each other along a “juncture” (i.e., a place where things join) strongly supports interpreting the subject limitation to require physical contact (i.e., touching) at least along some portion of the flanges (such as shown in Figure 2, reproduced above). To the contrary, nothing in claims 38 or 91, or their underlying independent claims, suggests that two flanges “engaging each other along a juncture” means or even includes within its scope two flanges “symmetrical to each other across a juncture,” as urged by Petitioner (Pet. 59).” slip op. at 67

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

    “Petitioner persuasively argues, and we agree: There is certainly no requirement that the hanger contain a component “that prevents the back face of the drywall (or any portion thereof) being secured directly to the face of the wall framing” or that the back flange plane “define” or “bound” the space that receives drywall as alleged by Patent Owner. POR [PO Resp.], 25-26. As explained in the Petition and supported by Mr. Fennell’s testimony, Yamaguchi-Bundy’s modified hanger has an extension portion that is long enough to permit two layers of 5/8-inch-thick drywall (i.e., an extending flange having a length over 1 and 1/4 inches) to be received between the channel-shaped portion and the back flange plane. Pet., 28-30, 37; EX1003, ¶96. That is all that is required. EX1046, ¶32. Pet. Reply 12.” slip op. at 38

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentable
  PTAB · Feb 28, 2025 · PGR2023-00047 · APJ Stephen E Belisle · PGR · Final written decision

  Claims 1–37, 39–90, and 92–105 are unpatentable as obvious; claims 38 and 91 were not shown unpatentable because the cited art did not teach flanges physically touching along a juncture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of these cases would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’626 patent, the background technical field, the prior art, and Petitioner’s proposed and undisputed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Fennell (Ex. 1003 ¶¶ 12–15).” slip op. at 20

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

    “But Patent Owner then urges us to narrow the meaning of “portion” itself such that “channel-shaped portion” requires “all portions of the hanger which directly bound the channel that receives the structural component.” PO Resp. 19 (emphases added). Patent Owner argues the Specification makes this “clear.” Id. (citing Ex. 1001, 2:28–31). Contrary to Patent Owner’s arguments (PO Resp. 19), we find no support in claim 1 to further narrow the interpretation of “portion” in “channel-shaped portion” to mean every portion of the hanger which directly bounds the channel that receives the structural component. See Ex. 1001, 12:14–36 (claim 1). We, like Petitioner, similarly find no support in the Specification or limited prosecution history (see Pet. 5–6), and Patent Owner does not direct us to any, showing that the inventor acted as its own lexicographer or disavowed any claim scope to allot this narrowed interpretation to the subject limitation. See Pet. Reply 3 (“Nowhere does the ’626 patent specification describe that all portions of the hanger directly bounding channel 52 constitute the channel-shaped portion.” (citing Ex. 1046 ¶¶ 16–18; Ex. 1001, 4:39–47)); PO Resp. 19. Further, as argued by Petitioner (Pet. Reply 4–5), Patent Owner’s proposed construction limiting “portion” to “all portions” of the hanger that “directly bound the channel that receives the structural component” could cause the “channel-shaped portion” on the same physical hanger to change depending on which type of structural component an installer were to choose to use in construction: Patent Owner’s claim construction improperly focuses on the wall assembly intended to be used with the recited hanger. The claims, however, are directed to a hanger, not a wall assembly. When assessing what part of a hanger constitutes a “channel-shaped portion” and an “extension portion,” [the skilled artisan] would consider the physical features of the hanger itself and the natural divisions between those features. [The skilled artisan] would not assess the claim language and its application to the prior art by speculating how an installer might later install the hanger with a joist or an entire wall assembly, which may differ from installation to installation. Pet. Reply 4 (citing Ex. 1046 ¶ 19). We find this defect further supports a broader interpretation of “channel-shaped portion” as discussed above. Accordingly, based on the complete record before us, we determine” slip op. at 34

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

    “Petitioner argues, inter alia, that Yamaguchi teaches a joist hanger with an extension portion defining a space between its back flange and channel-shaped portion, and Bundy teaches to size a space created by an extension portion of its joist hanger to receive two layers of ⅝-inch-thick drywall between its back flange plane and channel-shaped portion. Pet. 16–18 (citing 1003 ¶¶ 75–78; Ex. 1007, 5:16–18, Fig. 1; Ex. 1041 (“Perspective View”; “Usage View”)); see id. at 17–18 (discussing “advantages” of two layers of 5/8" drywall as “fire resistance in a fire separation wall”). Petitioner argues the skilled artisan “would have been motivated to receive drywall between Yamaguchi’s back flange and channel-shaped portion to provide a shielded fire resistant wooden frame wall.” Pet. 18 (citing Ex. 1003 ¶¶ 78–79; Ex. 1007, 2:10–24); see id. ([“The skilled artisan] would have optimized the size of the spacing between Yamaguchi’s back flange and channel-shaped portion to accommodate two layers of 5/8”-thick-drywall according to the size preference described by Bundy for optimal fire protection and wall integrity.” (citing Ex. 1003 ¶ 80; Ex. 1007, 5:10–22)). Petitioner concludes: This modification to Yamaguchi would have been nothing more than applying a known technique (Bundy’s spacing a hanger seat from a wall frame by distance sufficient to accommodate two 5/8”-thick-drywall sheets for fire resistance) to a similar device (Yamaguchi’s hanger having a spacing of indeterminate length) to obtain the predictable result of a firewall hanger having a space between its channel-shaped portion and a wall frame large enough for receiving drywall therebetween, thereby “protect[ing] the structural members of a building.” Pet. 18 (citing Ex. 1007, 5:18–20; Ex. 1003 ¶ 80). Petitioner argues the skilled artisan would have had a reasonable expectation of success in modifying Yamaguchi as discussed above, “because doing so would still allow Yamaguchi’s hanger to perform its intended function of securing a joist to a wall.” Pet. 18 (citing Ex. 1041, 1; Ex. 1003 ¶ 81). Petitioner argues, “[r]ecognizing that Yamaguchi’s and Bundy’s hangers are constructed from sheet metal,” the skilled artisan “would have understood how to modify the size of Yamaguchi’s extension portions to accommodate two layers of 5/8”-thick-drywall while still allowing Yamaguchi’s hanger to secure a joist’s end to a frame wall.” Pet. 18–19 (citing Ex. 1003 ¶¶ 81–83; Ex. 1007, 4:47–51); see id. at 19–20 (discussing that although “Yamaguchi’s described setting is a sill plate,” the skilled artisan “would have been motivated to use Yamaguchi’s hanger on a wood frame wall in particular so that sheathing could be installed in the space behind the joist as taught by Bundy” (citing Ex. 1003 ¶¶ 81–82)). Based on the foregoing and the complete record before us, we find” slip op. at 46

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “artisan would have interpreted or understood the teachings of Yamaguchi and Bundy, as well as of the combination of those references, are unsupported attorney-arguments. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Patent Owner cites no evidence of how the skilled artisan would have understood the combined teachings of Yamaguchi and Bundy, or how such an understanding would support Patent Owner’s attorney arguments. Indeed, Patent Owner did not file any expert testimony in any of the three subject cases, despite that we must resolve the legal question of obviousness on the basis of underlying factual determinations, particularly the scope and content of the prior art and any differences between the claimed subject matter and the prior art from the vantage point of the skilled artisan. Graham, 383 U.S. at 17–18; see Pet. Reply 2 (“As a threshold matter, the Board’s findings in its Institution Decision should be carried forward to its final written decision because Patent Owner did not submit an expert declaration in support of its arguments.”); but see PO Sur-reply 1–4 (“[T]here is no requirement that a party rely exclusively on expert testimony in Post Grant Review proceedings or that attorney argument must be disregarded.”). To the contrary, Petitioner’s expert, Mr. Fennell, persuasively testifies in detail how and why the skilled artisan would have combined the teachings and suggestions of Yamaguchi and Bundy to achieve the invention of claim 1, including the features of limitation 1.3.B. See, e.g., Ex. 1003 ¶¶ 73–83, 96; Ex. 1046 ¶¶ 30–40. We find Mr. Fennell’s testimony credible (and uncontroverted).” slip op. at 40

  Patent outcomesUS 11,649,626 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,649,626
• Alivecor, Inc. v. Apple Inc.Some claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision

  Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10

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

    “C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” 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)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11

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

    “What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28

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

    “As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43

  Patent outcomesUS 10,866,619 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,866,619

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.