• Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd.All claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00222 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–3, 6–23, and 25–33 are unpatentable, including as anticipated by Chen and as obvious over the Chen and Inskeep combinations.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “have at least a Bachelor’s Degree in Electrical Engineering and at least two years of experience in the field of electrical engineering and specifically power supply management such as battery charging system design.” PO Resp. 31. Petitioner presents a similar formulation. Pet. 10. Although we do not discern any meaningful distinction between the parties’ formulations, we adopt Patent Owner’s description of a person of ordinary skill as it is consistent with the prior art and challenged patent’s specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 5

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

    “a first current through one or more output ports of the at least one output port in a first operating mode,” and “is configured to output a second current capable of starting a vehicle engine through the pair of output terminals in a second operating mode.” Ex. 1001, 8:25–34. Claim 21 has similar first and second operating-mode limitations. Id. at 9:40–46. Patent Owner proposes that “[t]he proper construction for ‘first operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a first current through one or more output ports of the at least one output port, and outputting a second current capable of starting a vehicle engine through the pair of output terminals is inhibited.’” PO Resp. 25. Similarly, Patent Owner argues “[t]he proper construction for ‘second operating mode’ is ‘an operating mode of the portable backup charger wherein the battery pack is configured to output a second current capable of starting a vehicle engine through the pair of output terminals, and outputting a first current through one or more output ports of the at least one output port is inhibited.’” Id. at 27. Patent Owner asserts that claim differentiation supports its construction because dependent claim 3 recites “a third operating mode for outputting the first current and the second current simultaneously,” and “if the battery pack could output the first current and the second current simultaneously in the first operating mode, then there would be no difference between the claimed first operating mode and the claimed third operating mode.” Id. at 26. We disagree with Patent Owner’s constructions because, as Petitioner explains, they wrongly import current-inhibiting limitations beyond the plain language in the claim. Pet. Reply 1. Nothing in the at-issue language addresses inhibiting current. In addition, the claimed first and third operating modes are still distinct without importing additional limitations because outputting just the first current is sufficient for the first operating mode, but not for the third. In other words, whereas the third operating mode requires simultaneity, the first and second merely permit it. Thus, claim differentiation does not support Patent Owner’s construction. Last, although Patent Owner asserts that its construction “is consistent with the specification,” nothing in the cited passages describes inhibiting current. Prelim. Resp. 26 (citing Ex. 1001, 4:30–33, 5:30–33, 5:58–62). Instead, the specification characterizes the modes solely by what the portable charger “can output,” not what is inhibited. Ex. 1001, 4:30–33, 5:30–33, 5:58–62. Thus, we decline to read the first and second operating modes to require the current-inhibiting features that Patent Owner asserts.” slip op. at 6

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

    “Patent Owner argues the two current paths are not different because Chen’s Figure 1 shows they overlap between the lithium battery and the output control circuit and “only diverge when making the connection to the output control circuit.” PO Resp. 32. We disagree. First, Patent Owner’s argument is based on a claim construction for “different” current paths that we do not adopt for the reasons above. In addition, we agree with Petitioner that Chen shows the claimed different current paths even under Patent Owner’s construction. Pet. Reply 8–12. Specifically, as Petitioner explains, a skilled artisan would recognize that Chen’s physical circuits are depicted in Figures 4–7, rather than in Chen’s Figure 1, which is merely a “block diagram of the principle of present invention.” Id. at 9; Ex. 1006 ¶ 15. Unlike Figure 1, Chen’s Figures 5, 6, and 7 show current paths between the battery and USB outputs, and between the battery and DC multi-gear output, that do not overlap with the high current path shown in Chen’s Figure 4. Pet. 9–12. Based on Petitioner’s analysis and for the reasons above, we agree with Petitioner that Chen teaches the claimed “pair of output terminals coupled to the battery pack and having a current path to the battery pack different from that of the at least one output port to the battery pack.”” slip op. at 10

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

    “Patent Owner asserts one skilled in the art would not have added White’s fuse to Chen because doing so was “unnecessary” given Chen’s built-in relay K1 that already provides protection. PO Resp. 42–43. We disagree because, as Petitioner notes, “the Petition cited ample evidence that both layers of over current prevention provide improved safety and protection to the battery.” Pet. Reply 17 (citing Pet. 31–33); see also, e.g., Pet. 31 (describing “advantageously reduc[ing] the likelihood of damage”), id. at 32 (describing “the additional benefit of a safety fuse along a jumper cable to promptly cut off current in the event of a short circuit” and “more simplified maintenance and repair”). Given Petitioner’s unrebutted rationale, Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that adding White’s fuse and polarity-protection connector to Chen’s power-supply system would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Other than the arguments addressed above, Patent Owner does not additionally challenge Petitioner’s obviousness showing based on Chen and White. We have reviewed Petitioner’s arguments and evidence and, based on that analysis, we find Petitioner has shown by a preponderance of the evidence that claims 1, 2, 6–9, 11–14, 16–22, 25–28, and 30–33 would have been obvious over Chen and White.” slip op. at 15

  Patent outcomesUS 9,643,506 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 9,643,506
• Samsung Electronics Co. Ltd. / Google LLC et al. v. Headwater Research LLCAll claims unpatentable
  PTAB · Jul 23, 2025 · IPR2024-00341 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–17, 19, 21–27, 29, and 30 are unpatentable as obvious over TS-23.140 and Ogawa.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on the full record, we find that Patent Owner’s proposed level of ordinary skill in the art is consistent with the ’733 patent and the asserted prior art. PO Resp. 5 (citing Ex. 2001 ¶¶ 29–31). We agree with Petitioner that Patent Owner’s proposal is encompassed by Petitioner’s proposed level of ordinary skill in the art. Pet. Reply 4. Our analysis below would not change, if we used Petitioner’s proposal.” slip op. at 8

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

    “Based on the full record, we do not need to interpret expressly any claim term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “o) Objective Indicia of Non-obviousness Patent Owner does not present any arguments or evidence regarding any objective indicia of nonobviousness for any of the challenged claims. See PO Resp.” slip op. at 49

  Patent outcomesUS 8,406,733 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,406,733
• Apple Inc. v. THL Holding Company, LLCAll claims unpatentable
  PTAB · Jul 3, 2025 · IPR2024-00398 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious: claims 1, 4, 7, and 8 over Kalliola and Vauclair; claims 2, 3, and 6 with Kalayjian; claim 5 with Turunen; and claim 9 with Trimble.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner agrees with the qualifications proposed by Petitioner: “this description reasonably represents the level of ordinary skill necessary to understand and implement the teachings of the ’680 Patent, as well as the prior art cited in this proceeding.” PO Resp. 13–14 (citing Ex. 2002 ¶ 22). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’680 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14

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

    “Petitioner proposes that, based on Patent Owner’s proposed construction in the parallel litigation, we construe “pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Pet. 6 (quoting Ex. 1009, 15–168). In Response, Patent Owner adopts Petitioner’s interpretation of this term. PO Resp. 14. We adopt the parties’ proposed construction for this term. We determine that we need not construe any other claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15

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

    “Second, Petitioner demonstrates that the combination of Kalliola and Vauclair teaches claim limitations 1(d)(iv) and 1(d)(v). As discussed and cited to above, the Petition identifies that, with Kalliola’s touch screen as the claimed “touch screen,” Kalliola’s processor presents a graphical user interface via its touch screen as set forth for limitation 1(c) and 1(d)(ii), and Kalliola’s processor operates in conjunction with its graphical user interface to perform claimed steps as set forth for limitation 1(d)(iii). See Pet. 20–29. We agree that the assertions are supported by Kalliola’s disclosure of a touch screen with a graphical user interface presented thereon, where “tactile elements” “allow the user . . . to enter data . . . into the device.” See Ex. 1004 ¶¶ 26, 40, 42, 44, 51, 71, Figs. 3, 5. Petitioner also asserts, and we agree, that Kalliola teaches the use of Bluetooth-enabled emitters in remote devices that communicate with its wireless communication device with a signal emitter. Pet. 29–31 (citing Ex. 104 ¶¶ 9, 71, 73–75, 77, 107, Fig. 5). Petitioner contends, and we agree, that Vauclair provides additional specificity regarding the pairing process between two devices with its disclosures of a pairing process between devices using protocols that include Bluetooth, wherein a user can select a pairing option from a menu on a display. Id. at 31–32 (citing Ex. 1005 ¶¶ 22, 24, 28, 30, 34–36, 49, Fig. 1; Ex. 1003 ¶¶ 164–167). Petitioner argues, and we agree, that it would have been obvious to a person of ordinary skill in the art to configure Kalliola to use its processor to present “a pairing menu to enable a user to initiate a Bluetooth pairing process between the WCD and the signal emitter by selecting a pairing option via the WCD’s touchscreen,” with Vauclair teaching at least the selection of a pairing option presented on its display, because the presented pairing menu on Kalliola’s touch screen would allow the user to pair the WCD with the user’s personal item signal emitters and would also allow the devices to recognize each other on subsequent connections. Id. at 34–35 (citing Ex. 1003 ¶ 172); see also Ex. 1005 ¶¶ 30, 36. Consequently, we also agree with Petitioner’s assertion that it would have been obvious to a person of skill of ordinary skill in the art that Kalliola’s graphical user interface on its touch screen would have generated signals corresponding to the user’s inputs at least to carry out designated functions, like the initiation of a pairing process, and “the signals generated by the GUI from interaction at the touchscreen would be sent to the WCD’s processor so that the processor can interpret the user’s inputs and take the appropriate action.” Pet. 35; see also Pet. Reply 2–7. Petitioner also asserts, and we agree, that generating processor signals in response to a user indication was a known mechanism for wireless devices, as were Bluetooth pairing and corresponding pairing menus, and there would be no change to the respective functions of Kalliola’s’ wireless communication devices and Vauclair’s pairing menu. Pet. 36 (citing Ex. 1003 ¶ 175). The Petition argues, and we agree, that because Bluetooth pairing and pairing menus were conventional prior to time of the invention, there would have been a reasonable expectation of success configuring Kalliola’s wireless communication device. Id. (citing Ex. 1003 ¶ 176); see also Ex. 1003 ¶¶ 71–75 (Dr. Buehrer providing evidence on Bluetooth-connected devices and associated pairing). Accordingly, we determine that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, a reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(iv). As to limitation 1(d)(v), we also agree with Petitioner that in response to a generation of a pairing signal as discussed in limitation 1(d)(iv), Vauclair discloses that wireless transceivers communicate a series of RF signals back and forth to pair the devices. Pet. 37–38. Petitioner asserts, and we agree, that, in combination, it would have been obvious to configure Kalliola’s Bluetooth transceiver with Vauclair’s teachings for the communication of RF signals to pair devices. Id. at 39. Petitioner contends, and we agree, that a person of ordinary skill in the art would have understood that Kalliola teaches that its wireless communication device performs Bluetooth communications with signal emitters, with the user selecting a desired signal emitter for locating objects, and that this pairing would also allow two Bluetooth devices to recognize each other on subsequent connections. Id. (Ex. 1003 ¶ 184). Petitioner asserts, and we agree, that applying Vauclair’s known technique of communicating RF signals to pair devices would improve Kalliola’s wireless communication device and yield the predictable result of Bluetooth-paired devices. Id. We also agree with Petitioner’s argument that this pairing was an understood and conventional feature of Bluetooth mobile communication devices, so there was a reasonable expectation of success in the combination. Id. at 40 (citing Ex. 1003 ¶ 186); see also Ex. 1003 ¶¶ 71–72 (Dr. Buehrer providing evidence on Bluetooth-connected devices). Accordingly, we find that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(v).” slip op. at 40

  • Strike new argumentNew argument consideredDecided for petitioner

    “Ex. 1003 ¶ 172. The Petition also asserts that, in the combination, there would be no change to the respective functions of either Kalliola’s WCD or Vauclair’s pairing menu. Pet. 36. Thus, the Petition relies on Kalliola’s processor, and its touchscreen, and graphical user interface with Vauclair’s teachings for the pairing menu displayed, wherein pairing signals are generated by Kalliola’s graphical user interface by interaction with the screen. As we discuss further below, Petitioner includes assertions that Vauclair itself teaches that the pairing signal is generated by its graphical user interface. See id. at 33, 37. The Petition, however, also relies on the combination of Kalliola and Vauclair to teach generating a pairing signal by Kalliola’s graphical user interface by interaction with its screen, as discussed above. Id. at 35. Accordingly, it is not necessary to reach the issue of whether Vauclair alone teaches that its graphical user interface generates the pairing signal. Additionally, we do not find that Petitioner’s further arguments in its Reply concerning interaction with Kalliola’s wireless communication device through its graphical user interface were impermissibly presented in view of the Petition’s specific assertions on the teachings of the combination of Kalliola and Vauclair, as discussed above, and its reliance on user interaction with Kalliola’s graphical user interface for the teaching of generating the pairing signal. See 37 C.F.R. § 42.23(b).” slip op. at 39

  Patent outcomesUS 11,265,680 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,265,680
• Apple Inc. v. THL Holding Company, LLCAll claims unpatentable
  PTAB · Jul 3, 2025 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 11–19 are unpatentable as obvious: claims 11–14 over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian; claims 15–18 with Thorn; and claim 19 with Thorn and Sharp.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). “Patent Owner agrees that this description reasonably represents the level of ordinary skill required to understand and implement the teachings of the ’246 Patent, as well as the prior art cited in the Petition.” PO Resp. 14 (citing Ex. 2002 ¶ 22). Accordingly, we adopt Petitioner’s proposed level of skill.” slip op. at 8

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

    “device.” This term appears twice in claim 11, once in the phrase “an orientation sensor to detect rotation of the mobile communication device,” and once in the phrase “rotation of the mobile communication device detected by the orientation sensor.” Ex. 1001, 39:13–14, 39:36–38. Patent Owner argues that we should construe this term as limited to “detecting the rotation of the mobile communication device as a whole, not the movement of individual components.” PO Resp. 15–18. Petitioner disputes this, arguing that “rotation of the mobile communication device” should be construed not only to cover rotation of the device as a whole but also should “encompass[] any rotation of the mobile communication device relative to any object, including itself,” which would extend to rotation of “any component of the device.” Reply 4–5. We need not resolve this dispute to determine the outcome of Petitioner’s asserted challenges to the ’246 patent. As discussed more fully below, under either party’s proposed construction of “rotation of the mobile communication device,” Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyOther

    “On the record developed during trial, we are persuaded that Petitioner has shown by a preponderance of the evidence that Kalliola teaches “an orientation sensor to detect rotation of the mobile communication device,” where “rotation of the mobile communication device” includes rotation of the device as a whole, regardless of whether it also includes rotation of one portion of the device relative to another. Kalliola teaches “motion sensors integrated in WCD 100” that are “used to detect when WCD 100 is being moved,” as well as to detect “when user 110 moves WCD 100 too quickly for an accurate DoA estimation.” Ex. 1004 ¶¶ 84, 86. Although Patent Owner argues that Kalliola’s motion sensors do not detect rotation of the device, this is incorrect on the record as developed at trial. Kalliola teaches that the motion sensor may take “the form of a semiconductor gyroscope chip.” Id. ¶ 84. There is ample evidence that gyroscopes detect rotation. Ex. 1013, 38 (identifying as an “orientation sensor” a “[t]hree-axis gyro” and a “[d]ynamic [h]igh [r]ange [gyro]”); Ex. 1046, 49:18–20 (Dr. Feuerstein testifying that gyroscopes “can be used to detect angular velocity”); Ex. 1047 ¶ 47 (citing Ex. 1051, 170; Ex. 1053, 9) (Dr. Buehrer testifying that a person of ordinary skill in the art “would understand that gyroscopes are well-known inertial sensors that specifically detect rotational motion”). Thus, by a preponderance of the evidence, Petitioner has shown that Kalliola teaches the “orientation sensor to detect rotation of the mobile communication device” of this limitation.” slip op. at 17

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

    “whether Kalliola’s teaching of pausing and resuming its DoA estimation based on detected rotational motion, or Kalliola’s teaching of speeding up its DoA estimation based on detected rotational motion, amounts to determining direction based on rotation. Pet. 63–64; PO Resp. 25–27; Reply 24–27; Sur-Reply 11–14. On the record developed during trial, we are persuaded that the preponderance of the evidence supports a finding that Kalliola teaches determining direction based on rotation. First, Kalliola discloses “pausing a DoA estimation until the motion of the WCD is detected by the motion sensors,” then resuming “the updating of the DoA estimation” when motion is detected. Ex. 1004 ¶¶ 14, 84. Second, Kalliola discloses a “correction or compensation mode” that is “employed when user 110 moves WCD 100 too quickly for an accurate DoA estimation,” with this “increase[d] speed of the DoA estimation” being triggered by the “[i]ncreased activity detected by motion sensors in WCD 100.” Id. ¶ 86. As discussed above with respect to limitation 11(d), the detected motion that triggers either of these modes can be rotational motion of the WCD detected by a gyroscope.” slip op. at 22

  Patent outcomesUS 11,350,246 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,350,246
• Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentable
  PTAB · Jul 1, 2025 · IPR2024-00287 · APJ Norman H Beamer · IPR · Final written decision

  Claims 9–12, 14–16, and 22–24 are unpatentable under § 103 over Riepling and Meisels, or Riepling, Manzano, and Meisels; claim 13 was disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. We apply Petitioner’s articulation.” slip op. at 20

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

    “construction of “representation of the at least one file.” Petitioner is correct that a representation of a file is not the file itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ʼ906 application, illustrated in the portion of Figure 6B reproduced below (highlighted here for purposes of explanation). This portion of Figure 6B depicts representations of two files: “FamilyHistory.docx” and “XmasLetter-2012.pdf.” The ’906 application specifically states: [A] located data resources dialog UI element 630b . . . includes a presentation space 632b for presenting a user detectable representation of some or all of the data objects identified in the received data object identification response from . . . second node 504. Ex. 2004 ¶ 147 (emphasis added). The entries in the above figure are representations of the files, not the files themselves. The actual files are stored in the file system storage associated with the user’s node, and only retrieved if the user selects the “Access” or “Access All” elements. Id. ¶ 148. Patent Owner misconstrues the claim 22 language, “a first representation of the at least one file, in a location among one or more folders, that is stored at the at least one server” and “a second representation of the at least one file, in a location among one or more folders, that is stored at the first node.” Patent Owner infers from this language that the representation is itself a file that is “in a location among one or more folders” and is stored on a server or at a node. PO Resp. 17. Not so — the representation of a file, such as “FamilyHistory.docx” in the above figure, is not stored at a server or node, but rather is simply displayed on a screen. As the ’906 application states: A representation of a program entity may be stored and/or otherwise maintained in a presentation space. As used in this document, the term “presentation space” refers to a storage region allocated and/or otherwise provided for storing presentation information . . . . A screen of a display, for example, is a presentation space.” slip op. at 22

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

    “because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; and (iv) the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Other than its arguments directed to ’520 claim requirement 9[l], discussed below in Section III.D.4.d), Patent Owner does not further address Petitioner’s arguments regarding the combination of Riepling and Meisels. As discussed in that section, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Riepling and Meisels in the manner argued by Petitioner.” slip op. at 32

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

    “We agree with Petitioner that set content field 325 of Riepling teaches or suggests claim requirement 9[b]. As Petitioner’s expert explains, the fact that field 325 has an appearance identical to that of fields 321–324 in Figure 3, which fields are specifically stated to be “text field[s],” strongly suggests that field 325 is also a text field. Mowry Decl. ¶ 70; see also Reply 10–11. Patent Owner’s suggestion that field 325 could be a dropdown list or other type of field is contradicted by the fact that it does not show the typical dropdown arrow associated with a dropdown box, or other typical non-textbox appearance such as the checkbox appearance of field 320. Moreover, in the example of Figure 3, the “Set Content” entry is “audio,” which is a file description. Reply 10. The fact that “JPEG” is checked in field 320 is not inconsistent with the “audio” entry in field 325, given that, as Riepling explains, “it may be possible for audio files such as MP3 files to contain non-MP3 data, such as JPEG data embedded within the MP3 files.” Id. at 11 (citing Ex. 1107 ¶ 32; Mowry 2nd Decl. ¶ ¶ 101–104). Also, there is no reason why the Figure 5 response that gives the uploader the ability to provide additional description of the file being uploaded is inconsistent with the ability of the requester first describing what type of file is being requested via field 325 in Figure 3. Id. at 11–12. Accordingly, for the reasons discussed above, we are persuaded that the record supports Petitioner’s arguments regarding claim requirement 9[b].” slip op. at 37

  Patent outcomesUS 11,611,520 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentable
  PTAB · Jun 30, 2025 · IPR2024-00286 · APJ Norman H Beamer · IPR · Final written decision

  Claims 17–21 are unpatentable under § 103 over Houston and Garcia; the Board did not reach the alternative grounds.

  RulingsFinal written decision

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

    “We conclude that there is no basis for Patent Owner’s proposed construction of “representation of the at least one folder.” Petitioner is correct that a representation of a folder is not the folder itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ’635 application, illustrated in the portion of Figure 6D reproduced below (highlighted here for purposes of explanation). This portion of Figure 6D depicts representations of several folders, including the highlighted “Music” folder. The ’635 application specifically states: A folder content pane UI element 648d in navigation window UI element 646d is presented including representations of one or more data objects[11] at a location, identified in a path UI element 650d. A pointer UI element 652d illustrates a drag and drop operation of a “Music” folder represented in contents pane UI element 648d, dropped on edit window UI element 602d. Ex. 2004 ¶ 123 (emphasis added). The word “Music” in the above figure is a representation of a folder, not the folder itself. The actual folder is an entity in a file system that stores files (in the case of a “Music” folder, presumably MP3 or WAV files, or the like).” slip op. at 17

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

    “Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not need to rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — 14 For this argument and others, Patent Owner cites for additional support portions of U.S. Provisional Patent Application No. 61/233,787. PO Resp. 18, 42, 46; Sur-Reply 9–12. This application is designated in Houston as a related application, and incorporated by reference therein. Ex. 1003, code (60), 1:6–10. We denied as untimely Patent Owner’s request to belatedly add this application to the record. Ex. 3002; Paper 39. Even accepting Patent Owner’s representations of the relied-on disclosures in that application, those disclosures are cumulative to Houston’s criticisms of systems that store documents remotely, and are irrelevant for the same reasons as discussed herein with respect to those Houston disclosures. that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Id. at 40–41; Ex. 2045.15 Thus, Patent Owner’s argument that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared is not applicable to Petitioner’s challenges of claim 17–21, in light of our conclusion set forth above in Section III.C rejecting Patent Owner’s proposed construction of claim 17. The fact that the Houston system ensures the availability of synchronized local copies of files at each user’s local system and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, there is nothing about that particular difference in the approaches of Houston and Garcia that would support a finding that one of ordinary skill in the art would have been discouraged from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary” slip op. at 41

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

    “To give substantial weight to objective indicia of nonobviousness such as commercial success, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[T]he patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Fox Factory, 944 F.3d at 1378. The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). “A finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations”; rather, “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.’” Fox Factory, 994 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 125, 140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the [objective indicia] evidence presented in the context of whether the claimed invention as a whole would have been obvious to a skilled artisan.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 33 (PTAB Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331–32 (Fed. Cir. 2016)).” slip op. at 23

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

    “However, as Petitioner argues above, Houston discloses that a client can provide an email to the server to invite others to share a folder, and Houston explains that “attaching files [to emails is] cumbersome for many computer users.” Pet. 25–26 (citing Ex. 1003, Fig. 4, 1:41–42, 3:40–43, 7:50–51). From this, Petitioner argues that it would have been obvious for the email invitation to notify how to access the folder, rather than sending the folder contents itself. Id. Petitioner further argues that the claim 17[d] requirement would have been obvious over the combination of Houston and Garcia given the disclosure in Garcia of sharing a folder by sending an email with a link to the folder, instead of an attachment. Id. at 27, 57 (citing Ex. 1004, Figs. 9, 11–12, 10:32–34, 10:38–40, 11:39–43, cl. 3). We are persuaded that the record supports Petitioner’s arguments regarding this claim requirement. Both Houston alone, and the combination of Houston and Garcia, teach or suggest sending an email with a link to a folder to be shared, rather than the folder contents. Only if the recipient clicks on the link are the contents of the folder shared. Ex. 1004, 11:29–31. The act of clicking on the link in the email after the email is received is the required “initiation of the communication” that must occur separately from the email itself, as required by claim 17[d]: “causing generation of at least one email [that] does not include a file attachment, for permitting avoidance of at least one file from being communicated to and stored at the second node until an initiation of the communication of the at least one file by a user of the second node is detected and the communication commences via at least one server that stores the at least one file” (emphasis added). It does not matter if Houston or Garcia automatically downloads local copies of files when a recipient clicks on the email link, because that is a separate step following the step of claim 17[d].” slip op. at 46

  Patent outcomesUS 11,611,520 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Jumio Corporation v. Facetec, Inc.Instituted
  PTAB · Jun 9, 2025 · IPR2025-00107 · APJ Garth D Baer · IPR · Institution

  The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barDecided for patent owner

    “interest to this proceeding and is in privity with Petitioner and that the Petition is time-barred under 35 U.S.C. § 315(b) because it served iProov 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the challenged patent claims the benefit of applications filed after this date, the post-AIA version of §§ 102, 103 apply. Ex. 1001, codes (22), (60), (63). with a complaint for infringement of the ʼ606 patent more than one year before this Petition was filed. Prelim. Resp. 5–22. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 16–27. For the reasons we explained there, we do not agree that this Petition is not time-barred under 35 U.S.C. 315(b).” slip op. at 6

  • Other 314aDecided for petitioner

    “B. Discretionary Denial under § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court cases. Prelim. Resp. 47–56. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “C. Discretionary Denial under § 325(d) Patent Owner argues we should deny institution under 35 U.S.C. § 325(d) because Petitioner’s asserted references are the same or substantively as those the Office previously considered during prosecution. Prelim. Resp. 22–36. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 9–16. For the same reasons we explained there, we decline exercising our discretion to deny institution under § 325(d).” slip op. at 7

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

    “D. Claim Construction Neither party proposes an express construction for any claim terms. Pet. 5–6; see generally Prelim. Resp. We agree that no claim terms require express construction to determine whether to institute inter partes review. 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 7

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 11,157,606
• Jumio Corporation v. Facetec, Inc.Instituted
  PTAB · Jun 9, 2025 · IPR2025-00109 · APJ Bach V Hoang · IPR · Institution

  The Board instituted IPR on claims 1–24 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Derakhshani and Tanii.

  RulingsInstitution decision

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

    “3. Institution of Inter Partes Review As discussed above, at this stage in the proceeding, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Derakhshani, alone or combined with Tanii, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 22

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Patent Owner acknowledges that, in this IPR, “the time-bar is not implicated.” Prelim. Resp. 5–6. Nevertheless, Patent Owner argues that we should reach the RPI question here because other IPRs challenging different patents implicate the time bar under 35 U.S.C. § 315(b). Id. at 5–6. Patent Owner’s request effectively asks us to extend the § 315(b) time bar to implicate patents not asserted in an applicable infringement complaint. We decline to do so. The plain language of § 315(b) does not extend the time bar to any patent other than the patent subject to the instant petition: An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent (emphasis added). Nor are we aware of any other authority which requires us to interpret § 315(b) to extend the time bar to patents other than the challenged one. Because Patent Owner admits this Petition challenging the ’910 Patent is not time barred, the treatment in SharkNinja controls. Accordingly, on this record, we need not consider whether iProov must be named as an RPI and decline to deny institution under 35 U.S.C. § 312(a)(2).” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “B. 35 U.S.C. § 325(d) Patent Owner argues we should deny institution under 35 U.S.C. § 325(d) because Petitioner’s asserted references are the same or substantively as those the Office previously considered during prosecution. Prelim. Resp. 18–33. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 9–16. For the same reasons we explained there, we decline exercising our discretion to deny institution under § 325(d).” slip op. at 9

  § 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,874,910
• Jumio Corp. v. Facetec, Inc.Instituted
  PTAB · Jun 9, 2025 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Institution

  The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that at least one claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We need not consider whether iProov must be named as an RPI because Patent Owner does not allege that the failure to name iProov would implicate time bar, estoppel, or anything else material to this case. Our precedential authority, SharkNinja Operating LLC et al. v. iRobot Corp., controls this case, and explains that we need not determine whether a third party is an RPI to the Petitioner because “even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” IPR2020-00734, Paper 11, 18–19 (P.T.A.B. Oct. 6, 2020) (precedential).” slip op. at 3

  • Other 314aInstitution denied discretionary otherDenied

    “EXERCISE OF DISCRECTION A. 35 U.S.C. § 314(a) Patent Owner argues the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) in light of two co-pending district court cases. Prelim. Resp. 47–56. We addressed this same issue in our institution decision in IPR2025-00106. See IPR2025-00106, Paper 17 at 6–9. For the same reasons we explained there, we decline to exercise our discretion to deny institution based on the related district court cases.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “f) Conclusion – Claim 1 For the foregoing reasons, we determine Petitioner has established a reasonable likelihood that the combination of Derakhshani and Tanii teaches the limitations of claim 1 and a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over Derakhshani and Tanii. Our determination is not final and based only on the current record and arguments. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims.” slip op. at 23

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,693,938
• Jumio Corp. v. Facetec, Inc.Instituted
  PTAB · Jun 6, 2025 · IPR2025-00106 · APJ Nabeel U Khan · IPR · Institution

  The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood of success and declining discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “appointment of new counsel for Petitioner and a motion to stay pending IPR(s) was denied without prejudice to being refiled once new counsel has appeared for Petitioner. Ex. 2030. In the Nevada litigation, iProov moved to stay the case pending IPR(s) in February 2025, but the court has not decided whether to grant the stay. Prelim. Resp. 57. We decline to speculate about how the district court might rule on any refiled motion to stay in the California litigation (or the pending motion to stay in the Nevada litigation). Thus, the first factor is neutral.” slip op. at 7

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “framework, determining, first, “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). That first determination considers: (a) the similarities and material differences between the asserted art and the prior art involved” slip op. at 10

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “contends indicate that iProov is a real party in interest to this proceeding. For example, Patent Owner points to the overlap in prior art references asserted in this Petition and the prior art references relied upon in the California and Nevada litigations. Prelim. Resp. 14–15, 18. Patent Owner also points to indemnity obligations between iProov and Petitioner. Id. at 15–16. And finally, Patent Owner emphasizes the benefit that iProov would get from this Petition. Id. at 17–18. Having reviewed these arguments and evidence of record we determine that, even in light of the issues raised by Patent Owner, Petitioner was not acting at the behest of iProov in filing this Petition and that iProov did not direct, control, or fund this Petition. Ex. 1049 ¶ 4 (counsel for Petitioner attesting that “iProov did not direct, control, or fund the Petitions. iProov did not work on the Petitions nor was it involved with the Petitions in any way. Petitioner never provided drafts of the IPR Petitions to iProov, and Petitioner never discussed the IPR Petitions or their substance with iProov.”) We, therefore, determine that iProov is not” slip op. at 18

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “between the purported ‘privy’ and the relevant other party is sufficiently close such that both should be bound by the trial outcome and related estoppels.” TPG 14–15. “[T]he rationale behind § 315(b)’s preclusion provision is to prevent successive challenges to a patent by those who previously have had the opportunity to make such challenges in the prior litigation.” WesternGeco, 889 F.3d at 1319. Therefore, “it is important to determine whether the petitioner and the prior litigant’s relationship—as it relates to the lawsuit—is sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” Id.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,776,471

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.