- Microsoft Corporation v. Sterling Computers CorporationAll claims unpatentablePTAB · Sep 14, 2026 · IPR2025-00270 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–13, 15, 18, 20, 21, and 27 are unpatentable as obvious over Rohall and Schiavone, with Gomes added for claims 9 and 27.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision adopted Petitioner’s definition of a person of ordinary skill in the art. Inst. Dec. 9–10. In its Response, Patent Owner adopts Petitioner’s proposed level of ordinary skill. See PO Resp. 16 (“Patent Owner and its expert adopt the Board’s definition for purposes of this Response.”). Having considered the record, we continue to adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’911 Patent. Accord Inst. Dec. 9–10.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner and determine that the construction of “relational references” does not require the use of a relational model and, further, includes pointers that point to related messages exchanged among users. The intrinsic evidence leads us to this construction. First, the relevant language of claim 1 recites “a message container containing relational references pointing to a plurality of sent submessages stored externally to the message container in the message database.” Ex. 1001, 15:56–59. A relational model is not recited in that language or anywhere else in the claim. See id. at 15:51–16:14. Therefore, the claim does not expressly require a relational model. Furthermore, the claim language supports Petitioner’s interpretation that “relational references” include pointers that point to related messages because the claim states that the “relational references” perform the task of “pointing to a plurality of sent submessages.” Pet. Reply 7. Accordingly, the language of the claim supports a construction that does not require a relational model and at least suggests relational references include pointers.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“No other claim terms need construction for our decision here and we decline unnecessarily doing so. 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 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableDecided for petitioner
“We agree with Petitioner that the ordinarily skilled artisan would have been motivated to combine Rohall and Schiavone because Schiavone provides reasons to apply its techniques to email systems such as Rohall’s. Schiavone describes a need for “ensuring compliance of e-mail messages with applicable standards and/or laws and/or otherwise determining appropriateness of a message for an intended recipient,” especially because there is “a patchwork of local, federal and international laws.” Ex. 1006 ¶ 6. Schiavone also states that filtering emails, e.g., to remove spam, is beneficial. Id. ¶¶ 1–2. As Schiavone describes problems in email systems, which its rules-based email processing technique addresses, we determine that the ordinarily skilled artisan would have been motivated to combine Rohall and Schiavone. See KSR, 550 U.S. at 401 (a reference which teaches, suggests, or motivates its combination may “identify a reason that would have prompted a person of ordinary skill in the art to combine the elements”).” slip op. at 19
Patent outcomesUS 8,073,911 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,073,911 - Google LLC v. Wildseed Mobile, LLCNo claims unpatentablePTAB · Sep 1, 2026 · IPR2023-00247 · APJ Michael T Cygan · IPR · Remand
Claim 15 was not shown unpatentable over Rothschild alone or Rothschild and Chen because Petitioner did not sufficiently explain or support how the IM modality generates the claimed hot link.
RulingsRemand decision- BurdenNot shown unpatentable
“disclaim HTML-formatted advertisements in IM,” and that there is no evidence or expert testimony that IM messages are incompatible with HTML tags. Pet. Remand Reply 4–7 (also stating, “nor did Patent Owner contest the Petition’s showing with respect to the IM limitation of claim 15”). However, in inter partes review, the burden is on Petitioner to explain and support its assertions; it is not on Patent Owner to prove that its claims are not unpatentable. In re Magnum Oil Tools, 829 F.3d at 1375; PO Remand Resp. 5. Petitioner must explain how Rothschild teaches generating a hot link message, in an instant message communication, that includes the determined action and instructions for rendering and displaying the hot link. Petitioner’s reliance on a list of communication types is insufficient because although personal communications are sent “with” an advertisement, not all members of that list (e.g., SMS) generate a hot link message having the claimed instructions in the manner (formatting) asserted by Petitioner. Ex. 1005, 8:3–6; Ex. 2009 ¶ 64.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“link message by IM is that Rothschild states that “a personal communication can include, but is not limited to, an e-mail message, text message, short message service (SMS) message, chat-room message, instant messaging message, video message, voice message, and any other personalized network communications.” Pet. 40 (quoting Ex. 1005, 8:6–11); Pet. Remand Reply 2, 5–6 (arguing that this is unrebutted by Patent Owner). Such an explanation would be sufficient if each of those communications were shown to work in the same manner as email, such that no further explanation would be required to show that one having ordinary skill in the art would understand how Petitioner’s email and HTML tag explanations applied to each of the other message types. formatting step, which is required under Petitioner’s assertions for limitation [10.7]. Ex. 2009 ¶¶57 (citing Ex. 1005, Fig. 10), 60 (citing Ex. 1005, Fig. 11), 64 (“[t]here is no formatting step for the SMS message, only for e-mail.”), 76 (“SMS messages . . . do not use HTML”); PO Sur-reply 27. Nor does Petitioner assert or explain that IM messages are formatted so as to teach the generating step of limitation [1.4]/[10.7]. Pet. 32 (“Rothschild’s server generates a hot link message when the web server formats the message data into an e-mail that contains the selected interactive advertisement.”). Because Petitioner’s “generating a hot link” assertions rely on the use of HTML (in email), and one of Rothschild’s listed communication types (SMS) does not use HTML, Petitioner fails to show persuasively that an artisan of ordinary skill would have interpreted each of Rothschild’s other listed types of personal communication as using HTML to generate a hot link in the claimed manner.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Although Dr. Houh testifies that the use of IM would have been obvious, this testimony is a verbatim copy of what the Petition says on claim 5. Compare Ex. 1003 ¶¶ 80–81, 130–31 with Pet. 41. Dr. Houh cites to Rothschild’s list of communication types, but provides no analysis or reasoning or further evidence for his obviousness conclusion in the Houh Declaration. As such, it is a bare conclusory statement entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinions is based is entitled to little or no weight.”). We further note that although Dr. Houh relies upon Rothschild’s “interactive advertisement that is displayed with a graphic and includes an embedded URL,” Dr. Houh does not explain how each of the listed communication types (which include a voice message), or IM specifically, have these properties. Ex. 1003 ¶ 58.” slip op. at 11
Patent outcomesUS 10,869,169 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,869,169 - X Corp. v. Sterling Computers CorporationAll claims unpatentablePTAB · Jun 9, 2026 · IPR2025-00299 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over the stated Dumais-based and Kircher/Krug grounds; Patent Owner’s and Petitioner’s motions to exclude are dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Our Institution Decision adopted Petitioner’s definition of a person of ordinary skill in the art. Inst. Dec. 8–9. In its response, Patent Owner adopts Petitioner’s proposed level of ordinary skill. See PO Resp. 14–15 (“Patent Owner and its expert adopt the Board’s definition for purposes of this Response”). Having considered the record, we continue to adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’217 Patent. Accord Inst. Dec. 8–9.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“1. “computer program modules” The parties dispute whether four “computer program modules comprising” (1) “a monitoring module,” (2) “a first relevance measurement module,” (3) “a second relevance measurement module,” and (4) “a relevance analysis module” (collectively, “module limitations”) invoke 35 U.S.C. § 112 ¶ 6 and should be treated as means-plus-function limitations. See Pet. 8–18; PO Resp. 15–18; Pet. Reply 3–5; PO Sur-reply 4–7. However, the parties do not argue that the construction of these terms affects the analysis of Petitioner’s challenges. See PO Resp.; Pet. Reply; PO Sur-reply. Moreover, our analysis does not rely on any particular construction of these terms and, so, we need not resolve this dispute.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. “one or more measures derived from the group consistent of” Petitioner asserts limitations 1[g] and 1[g][i]–1[g][iv] recite an open Markush group listing alternatively useable members. Pet. 20–21 (citing Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005); Abbot Lab’ys v. Baxter Pharm. Prod., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (explaining that the listing of specified alternatives within a claim is referred to as a Markush group or Markush grouping)); See Ex. 1001, 47:47–58. Patent Owner does not dispute Petitioner’s construction. See PO Resp; PO Sur-reply. As these terms are not in controversy, we need not opine on this construction.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“Petitioner’s and Patent Owner’s respective constructions overlap in their requirement that “cognate” users share similar past user actions and assessments or are defined by similar direct input by the user. See Pet. 18; PO Resp. 20–21; PO Sur-reply 10. Petitioner argues that Patent Owner’s construction “exclude[s] ‘groups’ from the claims” and further limits the scope of to users who share actions (Pet. Reply 8–9), but Patent Owner states that its proposed construction does not so limit the claims (PO Sur-reply 10). As such, there is no disagreement that “cognate” users share similar past user actions and assessments or are defined by similar direct input by the user. As there is no controversy, we need not, and do not, construe the meaning of “cognate.” However, Patent Owner’s requirement that “at least one other of the plurality of users” is specifically cognate to “the user” who was sent the content is plainly recited in the claim language itself. The claim recites a “relevance score of a piece of electronic content sent from a sender to a user” in the preamble and similarly again in limitation 1[g]. See Ex. 1001, 47:25–28 (emphasis added), 45:62–64. The limitation in question directly references the claimed “user” when reciting the cognate relationship: “identify at least one other of the plurality of users . . . that is cognate to the user.” Ex. 1001, 47:43–45 (emphasis added). As such, the claim language plainly supports Patent Owner’s requirement and Petitioner does not contest that requirement. See Pet. Reply 8. least one other of the plurality of users . . . that is cognate to the user” as requiring that the identified other user is cognate specifically to the user whose relevance score is being determined.” slip op. at 12
Patent outcomesUS 7,716,217 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Apple Inc. v. Resonant Systems, Inc.All claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00983 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 10, 17, 19, and 20 are unpatentable under § 103 over Alexander and Cosper; the alternative Gregorio-based grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). But if the term does not use the word “means,” then it is presumed not to be subject to Section 112(f). Id. “That presumption can be overcome, but only if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation, read in light of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“both parties have asserted in the Apple Litigation that the “control component” requirement is a means-plus-function limitation subject to 35 U.S.C. §112(f), despite the fact that the control component limitation does not recite “means for.” Pet. 3 (citing Ex. 1012, 3–8; Ex. 1013, 13); PO Resp. 6–7. Indeed, the court in the Apple Litigation has concluded that the control component requirement is subject to 35 U.S.C. § 112(f), and has construed that requirement accordingly: Function: receiving control signals input to the oscillating resonant module; receiving outputs from the one or more sensors; controlling oscillation of the mass to produce a vibration response according to the received control signals by generating, using one or more of the received sensor outputs, control outputs to an actuator that drives the mass to oscillate. Structure: a microcontroller, a processor, a microprocessor, or a CPU that performs the algorithm shown in Figure 45 or the algorithm described in the corresponding text. See, e.g., 31:19–32:13, and equivalents thereof. Ex. 2001, 10; Ex. 2002, 40. Because of the Apple Litigation record, Petitioner presents its challenges in the alternative, first applying a plain meaning approach to the control component requirement, and also analyzing the requirement under the construction adopted in the Apple Litigation. Pet. 3–5. We adopt the court’s construction in the Apple Litigation. 35 U.S.C.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) “would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co., 550 U.S. at 419.” slip op. at 22
Patent outcomesUS 11,152,882 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,152,882 - Apple Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · Oct 9, 2025 · IPR2024-00806 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–8, 15–17, and 20 are unpatentable under § 103; claims 14 and 19 were not shown unpatentable because the proposed paramagnetic flux paths in Wakuda lacked adequate support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 33. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“The parties agree that independent claims 1, 19, and 20 include means plus function limitations under 35 U.S.C. § 112 ¶ 6.8 Pet. 3–7; PO Resp. 6–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claims 1, 19, and 20 are means plus function limitations. Pet. 3–7; PO Resp. 6–14. Construing a means plus function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Therefore, the specification clearly links the function of “control[ing] supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” at least to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.11 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs to the switch; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law 11 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:17–20. that limits the structure to that necessary to perform the claimed function. 12 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“to include the ability disclosed in Ramsay to allow a user to customize and store parameters associated with haptic effects, such as creating “haptic track files” that specify variations in the amplitude and frequency of the effect over time to achieve a desired effect. Pet. 46–47 (citing Ex. 1006 ¶¶ 15, 25– 28, 37; Ex. 1003 ¶¶ 192–193). Petitioner argues that this combination would have been motivated by the desire to expand the functionalities of haptic devices to allow end users to create and customize haptic effects, to provide a fuller haptic experience, and to be able to store haptic effects to save processing power compared to real-time generated effects. Id. at 47–49 (citing Ex. 1006 ¶¶ 14–15, 30, 47, 53–57; Ex. 1003 ¶¶ 194–196). Petitioner argues that this making combination would have had a reasonable expectation of success given that both references deal with linear actuators, both disclose storing frequency and amplitude values, and the combination involves routine knowledge of software techniques. Id. at 49–50 (citing Ex. 1004, 2:3–9; Ex. 1006 ¶¶ 17, 26–28; Ex. 1003 ¶¶ 197–198). Petitioner further argues that it would have been obvious to use the H-bridge switch of Rossi as part of the Gregorio actuator drive circuit 16 in the asserted Gregorio-Ramsay combination to periodically switch the polarity of drive signals to electric coil 28 of Gregorio, and thus oscillate magnet 27, under the control of a signal from processor 12 of Gregorio. Pet. 56 (citing Ex. 1003 ¶ 211). Petitioner argues that this combination would have been motivated because Gregorio does not disclose implementation details and therefore one of ordinary skill would have looked toward teachings like Rossi to fill in those details, and that an H-bridge switch was a well-known example circuit for implementing a change in “current flow direction/polarity” for “push” and “pull” actions in a system, and was a simple, cost-effective, and reliable circuit design. Id. at 56–58 (citing Ex. 1020, Abstr., Figs. 4, 6, 1:65–3:54; Ex. 1003 ¶¶ 212–217). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques through routine circuit design considerations and software instructions for generating the control signal. Id. at 58 (citing Ex. 1003 ¶ 218). Petitioner further argues that it would have been obvious to modify the Gregorio-Ramsay-Rossi combination, using the control algorithm disclosed in Aldrich, to replace the monitoring technique of Gregorio with that of Aldrich to maintain a resonance frequency by incrementing or decrementing the drive frequency. Pet. 58–59 (citing Ex. 1004, 4:22–28, 4:42–48; Ex. 1021, 2; Ex. 1003 ¶ 219). Petitioner’s expert provides implementation details of Aldrich, including that the Aldrich hill-climb technique would use a Boolean value to indicate whether the frequency was being increased, with local variables set to default values, and use integer values when processing sensor signals. Id. at 59–60 (citing Ex. 1021, 2; Ex. 1003 ¶¶ 220–222). Petitioner argues that these modifications would have been motivated to improve the Gregorio system using the Aldrich feedback algorithm for targeting a resonant frequency, given that the Gregorio approach had shortcomings that required a monitoring period with reduced haptic feedback, receiving weak EMF signals. Id. at 61–62 (citing Ex. 2004, 3:65–5:55, 5:63–65; Ex. 1021, 1–3; Ex. 1003 ¶¶ 223–227). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques for improvement to yield predictable results, readily implemented via software executed by the microprocessor. Id. at 62–63 (citing Ex. 2004, 2:44–50; Ex. 1021, 2; Ex. 1003 ¶ 229). Patent Owner does not address Petitioner’s arguments regarding the” slip op. at 27
Patent outcomesUS 9,941,830 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,941,830 - PTAB · Aug 13, 2025 · IPR2025-00430 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–3, 5–9, 13–15, 18, 19, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Rose.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion as to Claim 1 For the reasons discussed above, and based on Petitioner’s contentions and evidence, summarized above, we are persuaded, on this record, that Petitioner shows a reasonable likelihood of prevailing in demonstrating that claim 1 would have been obvious over Rose. 3. Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in demonstrating that the subject matter of claim 1 would have been obvious over Rose, we institute an inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 365 (2018) (stating 35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review”); 37 C.F.R. § 42.108(a).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this Decision, we adopt Petitioner’s proposed level of skill. Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition.” slip op. at 8
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– 21. Moreover, the claims recite that the modules are stored in a computerreadable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are undisputedly coupled with respectively recited functions. See Pet. 11–16 (identifying corresponding functions for each recited module). Dr. Kahn testifies that the POSITA would understand the recited functions can be performed by existing or off-the-shelf systems and that the functions recited explain how to engineer, build, or implement the modules using known and available techniques. Ex. 2001 ¶¶ 25–35. For institution purposes, we credit Dr. Khan’s testimony and determine that a POSITA would have understood the module limitations connote structure. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1369 (Fed. Cir. 2022) (“[B]ecause the recited functions can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means-plus-function ‘code’ limitations in the asserted claims to connote structure.”) (citing Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018)); WSOU Invs. LLC v. Google LLC, No. 2022-1063, 2023 WL 6889033, at *5 (Fed. Cir. Oct. 19, 2023) (“‘[C]omputer program code,’ when combined with a description of what the code is intended to accomplish, convey definite structure to the ordinarily skilled artisan.”). Accordingly, for institution purposes, we conclude that the computer program module limitations recited in claims 1 and 6 are not written in means-plus-function format because they would have connoted sufficiently definite structure to persons of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44
Patent outcomesUS 10,806,124 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,806,124 - PTAB · Jun 10, 2025 · IPR2025-00299 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Kircher and Krug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this 6 The current record does not include allegations or evidence of objective indicia of nonobviousness. proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). However, the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Although the specification broadly defines “module,” the language of the claims better supports Patent Owner’s argument that the computer program module limitations connote structure in the form of software instructions or code. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 22–24; Ex. 2003 ¶¶ 15–28). Specifically, claim 1 recites a computer-readable storage medium storing computer program modules configured to execute on the computer processor, the computer program modules comprising. . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Ex. 1001, 47:30–32. And, claim 6 recites the computer-program product having a computer-readable storage medium having computer program instructions encoded thereon comprising . . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– readable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“That is, Petitioner asserts that the claim requires only one of “a local importance,” “a global importance,” “a content relevance,” or “one or more actions on the piece of electronic content.” Id. We adopt Petitioner’s construction, which Patent Owner does not dispute at this stage in the proceeding. See Prelim. Resp. The claimed determination is “based at least in part on one or more measures derived from the group” members listed. As such, the claim language is clear that only one member of the group, i.e., one of limitations 1[g][i]–1[g][iv], is required to meet the claim. Independent claims 6 and 7 recite similar limitations as claim 1, and for purposes of institution, we adopt Petitioner’s claim construction for those similar limitations. See Ex. 1001, 48:35–46, 49:1–11.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Samsung Electronics Co., Ltd. v. Broadphone LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00155 · APJ Lisa L Tsang · IPR · Final written decision
Claims 1, 4, 5, 8, 14, 15, 18, 19, 22, 24, 25, and 28 are unpatentable as obvious over the stated combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art (“POSITA”) would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’811 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Patent Owner relies solely on the testimony of Dr. Cooklev to support its proffered claim construction. PO Resp. 5 (citing Ex. 2003 ¶ 34). Dr. Cooklev testifies, “[b]ased on my review of the patent and intrinsic record, [“device-specific target location”] has a plain and ordinary meaning and is used by the claims with that meaning, which requires a target location that is specific to a particular device.” Ex. 2003 ¶ 34. Other than further opining that “I see no lexicography or disclaimer in the intrinsic record indicating that ‘device-specific target [location]’ refers to a location that is generally applicable to numerous devices, or that the term otherwise has a meaning broader than its plain and ordinary meaning,” Dr. Cooklev provides no support for why the claimed “device-specific target location” “requires a target location that is specific to a particular device.” See id. We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c) Analysis Patent Owner’s Response does not advance arguments directed to claims 1 and 15. See generally PO Resp. Accordingly, Patent Owner has forfeited any argument regarding Petitioner’s contentions for these claims. See In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner forfeits an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted). We have reviewed Petitioner’s arguments regarding claims 1 and 15, which Patent Owner does not contest, and find them persuasive. Accordingly, we adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 15 would have been unpatentable over Spain-I, Hunzinger, and Nanda.” slip op. at 33
Patent outcomesUS 10,341,811 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,341,811 - Lenovo (United States) Inc. / Dell Inc. et al. v. Universal Connectivity Technologies, Inc.Institution deniedPTAB · Apr 17, 2025 · IPR2024-01482 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 2, 4, 8–10, 12, 13, 15, 18–20, and 25, exercising § 314(a) discretion after balancing the Fintiv factors and finding the merits not particularly strong.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“partes review “allays concerns about inefficiency and duplication of efforts,” and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. Of the three district court proceedings, the Lenovo Group case, pending in the Eastern District of Texas, is the most significant to our analysis here. In the Lenovo Group case, Lenovo Group has not requested a stay. Prelim. Resp. 16. Patent Owner argues that the Lenovo Group case is not likely to be stayed based on that court’s low grant rate in other cases and the progress of that case in particular. Id. at 17. The district court in the HP case denied a stay without prejudice and stated that a stay could be reconsidered in the future depending on the outcome at the PTAB. Prelim. Reply 3. The Dell case has been stayed. Id. On this record, we decline to speculate as to how any of the involved district courts where no stay is pending might rule on any future motion to stay. Thus, we determine that, while one stay has been granted, the lack of a stay in the other underlying district court cases, especially the Lenovo Group case, is not sufficiently persuasive to weigh this factor against exercising discretion. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative), cautions against speculating whether the district court would grant a stay if one were requested. Therefore, this factor has a neutral effect on the overall balancing of the Fintiv factors. B. Proximity of Trial Date to Projected Statutory Deadline (Factor 2) The scheduled trial date for the Lenovo Group case is November 3, 2025, which is about six months prior to the expected date for the final written decision here (i.e., late April 2026). See Prelim. Resp. 20; IPR2024- 01429, Ex. 2002 (Lenovo Group case Docket Control Order), 1. Petitioner argues this trial date is uncertain. Prelim. Reply 3. Further, Petitioner focuses its argument on what it terms a “growing backlog” in the Eastern District of Texas and “associated scheduling uncertainty.” Id. at 4. Petitioner refers to the status of the HP case, which is currently set for trial on September 21, 2026, and the stay in the Dell case. Id. Patent Owner responds that “[b]oth the scheduled trial date and the date of trial [in the Lenovo Group case] based on median time-to-trial statistics occur months before a final written decision would be expected here.” Prelim. Sur-reply 4. Patent Owner asserts that the time-to-trial statistics for the Eastern District of Texas project a median time-to-trial of 21.9 months. Prelim. Resp. 20–21 (citing Ex. 2007, U.S. District Courts Federal Court Management Statistics–Profiles—September 30, 2024). This projection yields a trial date that is prior to the expected final written decision date of April 2026. Prelim. Sur-reply 4. As with the previous factor, the status of the Lenovo Group case is our focus here. As stated, that trial is set to occur about six months before a final written decision would issue in this proceeding. The district court has stated that this trial date setting “cannot be changed without an acceptable showing of good cause.” Prelim. Resp. 20. We are not persuaded by Petitioner’s unsupported argument that the trial date is uncertain. We also consider the fact that the median time-to-trial statistic discussed by both parties projects a trial date earlier than the actual date set by the district court. Ex. 2007; Prelim. Sur-reply 1. The fact that the time-to-trial statistic is earlier than the trial date set in the Lenovo Group case confirms that the schedule set by the district court is credible and should be given weight. From this evidence, we are persuaded that we should rely on the trial” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Conclusion Regarding the Merits Petitioner does not present particularly strong merits. Petitioner’s arguments on the “bus limitation,” to succeed at trial, would require addressing a claim construction issue that was never addressed in the Petition and is arguably contradicted by the ’520 patent, which discloses transmitting packets representing a plurality of different control signals on a single bus. See Prelim. Sur-reply 2 (citing Ex. 1001, 7:34–38, 9:23–25, 9:50–54). Similarly, prevailing on the “modified protocol” issue would require proving that the HDMI–C protocol, which uses the same separate channel arrangement for CEC and DDC as standard HDMI, is sufficiently “modified” to meet the claim. Taking into account Patent Owner’s persuasive arguments supra in response, and for the reasons given, we do not find the merits of Petitioner’s position on either of these dispositive issues to be particularly strong.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner submits that it “for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 8. Patent Owner does not dispute Petitioner’s position that no terms require construction. Prelim. Resp. 11–12. We determine there are no claim terms that need to be expressly construed for this Decision.” slip op. at 15
- Skill levelDecided for patent owner
“Patent Owner states that a person of ordinary skill “would have the equivalent of a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training and three years of work experience with data communications systems or interfaces, including at least some experience with serial or display data communications systems or interfaces .” Prelim. Resp. 12. The differences between these nearly-identical definitions are minor and immaterial to our decision. We regard either description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 7,856,520
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.