- Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentablePTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.
RulingsFinal written decision- Skill levelOther
“Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. The level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA does not change our analysis or conclusions.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 26–29; Sur-reply 21.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15
Patent outcomesUS 10,123,074 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,123,074 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01119 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 2, 27, 37, 58, 60-64, 67-79, 186, 187, 189, 191, 192, 197, 199-204, 208-216, 223, 225, and 230 were not proven unpatentable over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9
- BurdenNot shown unpatentable
“Given our determination of how Ahn consistently describes the “touch and drag” gesture and “dragged” to mean the movement of a finger (or other object external to the touch screen), and in the absence of persuasive evidence in the figures or in other portions of Ahn to support the movement or appearance of a menu during a user input gesture, we determine that the present record does not support a conclusion that Ahn teaches or suggests a menu sliding onto a display or appearing during an input gesture such as a touch and drag gesture, as opposed to being displayed after such a gesture is completed.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Given our determination of how Ahn consistently describes the “touch and drag” gesture and “dragged” to mean the movement of a finger (or other object external to the touch screen), and in the absence of persuasive evidence in the figures or in other portions of Ahn to support the movement or appearance of a menu during a user input gesture, we determine that the present record does not support a conclusion that Ahn teaches or suggests a menu sliding onto a display or appearing during an input gesture such as a touch and drag gesture, as opposed to being displayed after such a gesture is completed.” slip op. at 27
- Expert testimonyDecided for patent owner
“Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29
Patent outcomesUS 10,656,754 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01116 · APJ Sharon Fenick · IPR · Final written decision
Petitioner did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, or 230 unpatentable because the asserted combinations did not establish the claimed blurring …
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“(Ex. 1003), that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof,” and that “[a]dditional years of experience could substitute for an advanced-level degree (and vice-versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–30).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. 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))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29
Patent outcomesUS 10,656,754 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01115 · APJ Sharon Fenick · IPR · Final written decision
Apple did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, and 230 unpatentable over the asserted Ahn combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Decision on Institution in each proceeding, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advancedlevel degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 15–16. Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. 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))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31
- BurdenNot shown unpatentable
“(3) Conclusion For the reasons discussed above, Petitioner has not shown limitation 2.d to be taught, suggested, or otherwise rendered obvious by Ahn and Chaudhri. Thus, we determine that Petitioner does not show by a preponderance of the evidence that claim 2 would have been obvious over the combination of Ahn and Chaudhri.” slip op. at 32
Patent outcomesUS 10,656,754 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,754 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · May 30, 2024 · IPR2020-00712 · APJ James A Tartal · IPR · Remand
Claims 3–6, 9–12, and 15–18 were not proven unpatentable because the petitioner failed to show the required two inputs in the asserted prior art.
RulingsRemand decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“The Specification of the ’148 patent states that “an alignment measurement may be made by measuring a value, e.g., current or voltage, associated with, e.g., proportional to, the current passing through [the] rechargeable power source.” Id. at 21:3–6. We therefore find that the Specification expressly identifies “current or voltage” as examples of “a value.” Id. In the FWD, we stated that “[a]lthough the ’148 patent makes clear that ‘a value’ may include, for example ‘voltage,’ we agree with Patent Owner that the two independent limitations should be construed such that the Value Limitation does not render superfluous the Signal Limitation or the Measured Voltage Limitation.” FWD 26. We further determined that “the Value Limitation and the Signal Limitation, as well as the Value Limitation and the Measured Voltage Limitation both require two separate inputs to the external power source.” Id. That determination is not at issue here. See Axonics, 75 F.4th at 1379–80 (stating that Petitioner did “not argue the Board erred in adopting the two-input claim construction”). 2. Additional Claim Terms We find no additional claim term requires express construction. 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 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). 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.” Id. (citation omitted). Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in electrical the industry working with implantable medical devices such as cardiac pacemakers or defibrillators.” Pet. 8. Patent Owner argues that a person of ordinary skill “would have had at least a bachelor’s degree in a relevant field (e.g., electrical, mechanical, or biomedical engineering) with at least two years of experience with the design of components (e.g., circuitry) for implantable medical devices and associated external devices (e.g., a charging unit),” and that “[m]ore education can substitute for practical experience and vice versa.” PO Resp. 4–5 (citing Ex. 2002 ¶¶ 21–22). Our analysis here, as in the FWD, does not turn on which of the Parties’ competing definitions of ordinary skill is applied. See FWD 16. Moreover, the appropriate level of ordinary skill is not in dispute on remand. Consistent with the FWD and the Decision on Institution, we apply the level of ordinary skill in the art proposed by Petitioner. See Inst. Dec. 11 (stating that “the ’148 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references . . . is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner” (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001))); FWD 16.” slip op. at 18
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“By contrast, in his Rebuttal Declaration, Dr. Mihran disputes Dr. Panescu’s new description of the operation of Schulman, noting that the current through R9 is not increased as a result of the current regulator R8/Q7 turning on, but that “[i]nstead, it is the increase in current through R9 in excess of the desired 40 mA operating current that causes the current regulator R8/Q7 to turn on, which acts to shunt this excess current through Q7, thereby diverting it away from the battery to maintain the desired operating condition during charging.” Ex. 2010 ¶ 6 n.3 (citing Ex. 1005, 5:2–7, 5:15–38, 9:57–68). We credit the testimony of Dr. Mihran, as supported by the cited portions of Schulman, over the unsupported testimony of Dr. Panescu in regard to how Schulman operates to measure current at R9. See id. However, whether Schulman discloses automatically varying the output power of the external power source based on a value associated with current passing through the internal battery, as required by the Value Limitation, is not in dispute. Dr. Mihran, for example, states that “Schulman discloses that the sole input provided to the external power” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Patent Owner argues, and we agree, that the measured current through R9 is the only input to the external power source Schulman APO Sur-reply 14–15. Patent Owner further argues, and we further agree, that the voltage across output leads 51 and 52 of Schulman is not an input to the external power source separate from the measured current through R9 in Schulman. See APO Sur-reply 11–16 (citing, e.g., Ex. 1003 ¶ 75; Ex. 2002 ¶ 46; Ex. 1005, 6:35–38; Ex. 2010 ¶¶ 4–7). In support of Patent Owner, Dr. Mihran states that “[t]he voltage between nodes 51 and 52 is never provided to the external power source in Schulman.” Ex. 2010 ¶ 4. According to Dr. Mihran, “Schulman discloses that the sole input provided to the external power source that the external power source uses to automatically regulate its power output is the input that derives from the amount of current flowing through the current sampling resistor R9.” Id. ¶ 5 (emphasis omitted) (citing Ex. 1005, 4:45–53, 6:35–38; Ex. 2002 ¶ 46). Dr. Mihran further states as follows: My understanding of Dr. Panescu’s opinion is that he does not contend that the voltage between nodes 51 and 52 is ever sent to the external power source as an input, and instead simply asserts that if “the voltage across leads 51 and 52 exceeds a predetermined amount,” then the current through R9 increases, which in turn “causes the power supplied by the external power source to decrease.” (Ex. 1012 at ¶16.) This does not represent a separate input, however, because the input derived from the current flowing through the current sampling resistor R9 (i.e. the load modulation frequency of telemetry circuit 12, the components of which “form a free-running multivibrator”) is what Dr. Panescu also identifies as satisfying the first input, “a value associated with said current passing through said internal battery.” (Ex. 1012 at ¶14 (“when the current through the internal battery . . . increases above a predetermined target value, the current regulator turns on, increasing the current through current sampling resistor R9.”) operating conditions may influence the value” of the amount of current flowing through current sampling resistor R9, and the current through R9 is the “only value that is communicated to the external power source,” corresponding to a single input that “cannot satisfy both of the two inputs required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent.” Id. ¶ 6. Dr. Mihran further states as follows: I understand Dr. Panescu’s opinion to be that, because Schulman discloses that the current through R9 is used by the external charger to automatically vary its output, any “value” that influences the amount of current through resistor R9 is a “separate respective input[] used by the external power source as a basis for automatically varying its power output.” ([Ex. 1012 ¶14].) In other words, Dr. Panescu simply identifies a voltage across two points in the circuit that he claims affects the current through R9 and contends that that voltage satisfies one of the two required separate inputs based on its alleged indirect impact on the output of the external charger. This strained interpretation of the claims renders superfluous the two separate inputs to the external power source required by claims 3, 6, 9, 12, 15, and 18 of the ’148 patent: (1) “a value associated with said current passing through said internal battery” and (2) “a signal proportional to said current passing through said internal battery” (claims 3, 9, and 15) and “measured voltage associated with said current passing through said internal battery” (claims 6, 12, and 18). In any circuit, there may be multiple components (e.g., transistors, switches, diodes, etc.) that can influence the current through a particular resistor. For example, in Schulman the current drawn by the stimulation portion of the implant circuit will influence the amount of current through R9. Dr. Panescu’s interpretation that a voltage or current at these components represents a “separate input” in Schulman is incorrect, because the sole input that is telemetered back to the external charger is the input derived from the amount of current flowing through R9.” slip op. at 35
Patent outcomesUS 8,738,148 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,738,148 - Nespresso USA, Inc. v. K-Fee System GMHBNo claims unpatentablePTAB · Apr 10, 2024 · IPR2022-01574 · APJ James J Mayberry · IPR · Final written decision
Claims 1–13 were not shown unpatentable because the asserted combinations did not teach or render obvious the claimed groove entirely to the side of the chamfered mandrel.
RulingsFinal written decision- Skill levelSkill level board ownPatent owner expert discountedDecided for patent owner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Expert testimonyPatent owner expert discountedDecided for petitioner
“The Federal Circuit has made clear that, “[t]o offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022) (emphasis added). “Without that skill, the witness’[s] opinions are neither relevant nor reliable.” Id. at 1377. The Federal Circuit reasons that “‘[a]dmitting testimony from a person . . . with no skill in the pertinent art serves only to cause mischief and confuse the factfinder.’ . . . That testimony would ‘amount[ ] to nothing more than advocacy from the witness stand.’” Id. (quoting Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362, 1364–65 (Fed. Cir. 2008)). possesses at least the level of ordinary skill in the art. Our level of ordinary skill in the art requires a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Patent Owner does not persuasively account for how Dr. Howle’s experience, extensive as it may be, includes five years of experience in design of mechanical beverage systems, or similar products, as well as experience with sensors for recognizing an identifier. Cf. Kyocera, 22 F.4th at 1376 (“Dr. Pratt has advanced degrees in engineering and extensive experience in the design and manufacture of fastener driving tools. But he lacks experience in power nailer design.”).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on the information above, we conclude that the limitation “a groove that is laterally offset from the chamfered mandrel” requires the groove to be entirely to the side of any part of the mandrel. This construction is consistent with the words of the claim—the claim states that the groove is laterally offset from, or to the side of, the chamfered mandrel, not merely offset from a portion of or the centerline of the mandrel. This construction is also consistent with the one embodiment describing the relationship between the mandrel and groove containing the seal, which depicts the groove entirely to the side of the chamfered mandrel. We do not accept Mr. Jobin’s testimony that laterally offset is determined relative to the centerline of an object. Neither the intrinsic record nor other extrinsic evidence provides support for Mr. Jobin identifying the centerline of an object as the reference point for determining if a point is laterally offset from the object.” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not agree with Petitioner that Yoakim teaches a groove that is laterally offset from the chamfered mandrel. As we indicated in our claim construction section, we construe the claim term to require the groove to be entirely to the side of any part of the mandrel. We agree with Patent Owner that, as depicted in Yoakim’s Figure 35, the alleged groove is not entirely to the side of any part of the mandrel. See Pet. 69; see also Pet. Reply 19 (showing the alleged groove, in red, including a portion over the chamfered mandrel); PO Resp. 55 (same). Even if Petitioner’s position is that all of the groove must be to the side of the centerline of the mandrel, Petitioner fails to prove that Yoakim teaches such a structure. As seen in Petitioner’s illustration at page 19 of Petitioner’s Reply (reproduced above), a small portion of the groove (which Petition colorizes in red) is to the left of the centerline (shown in green). See Pet. Reply 19.” slip op. at 40
Patent outcomesUS 11,254,491 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,254,491 - Axonics, Inc. v. Medtronic, Inc.No claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00715 · APJ Brent M Dougal · IPR · Remand
On remand, the majority determined claims 1, 2, 5, 7, 13–15, and 18 were not shown unpatentable under either of two §103 grounds, because the asserted combinations lacked sufficient support.
RulingsRemand decision- Skill levelSkill level board ownOther
“In view of the above, and the evidence of record, we find on remand that the relevant art is medical leads. We previously found that the level of ordinary skill in the art requires “experience researching and developing medical leads for sacral neuromodulation.” FWD 16. Consistent with the Federal Circuit decision and our finding of the relevant art, the experience of one of ordinary skill is not limited to “sacral neuromodulation.” Rather, the level of ordinary skill in the art requires experience in the relevant art, which is medical leads.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In an inter partes review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). No terms require express construction. 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Gerber indeed suggests anchoring its lead by fibrosis. Namely, Gerber discloses: “Yet another anchoring mechanism 50 is to allow the medical lead 10 to fibrose in naturally using the human body’s natural reaction to a foreign body or healing.” Ex. 1010, 4:27–30. Moreover, there is no dispute that tines secure via fibrosis. Petitioner, however, acknowledges that any foreign object introduced into the body will cause fibrosis. Tr. 12:8– 13. Nonetheless, Petitioner maintains that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to choose tines because tines were a leading candidate among the devices that anchor by fibrosis. Pet. 51 (citing Ex. 1003 ¶ 115) (emphasis added). Petitioner’s argument relies on Mr. Pless’s opinion that tines were a leading candidate for securement via fibrosis, and Mr. Pless’s opinion is based his review of the conventional uses of tines. Tr. 12:18–24 (Petitioner explaining that pages 13–16 of Mr. Pless’s Declaration provide support for his opinion that tines were most commonly used for fixation via fibrosis). According to Mr. Pless, “[b]efore 2001, tines were the most commonly used passive fixation, especially due to the predominant usage of tines in the cardiac space. Tines help to anchor the lead immediately after implantation by engaging with the body tissue, and then by fibrosis.” Ex. 1003, 15–16. Gerber’s lead, however, is for sacral nerve stimulation and is implanted in the sacral area via an open surgical procedure. Ex. 1010, 1:7–15, 5:32–39. We find credible Dr. Siegel’s testimony that Gerber’s device is implanted via an open surgical procedure in which the periosteum and soft tissues surrounding the implantation site are dissected, compromising their structural integrity and rendering tines, which initially anchor by engaging body tissue, ineffective. Thus, despite the prevalent use of tines in the cardiac space to secure leads by engaging body tissue and then by fibrosis, Petitioner has not persuaded us that Gerber’s disclosure of securing its lead by fibrosis would have led a POSITA to replace Gerber’s anchoring mechanism with tines. Regarding Petitioner’s reasoning for positioning tines according to Akerström’s arrangement, Lindegren attributes a manufacturing preference to tines integrally formed and evenly spaced on rings, not proximally extending tines that are adapted to be folded inwardly against the lead body without overlap. Ex. 1011, 5:17–20 (“From the manufacturing point of view, having the projections devised as an integral part of a one-piece ring-shaped means and evenly distributed around the circumference of the ring-shaped means, should be preferable.”). Moreover, according to Petitioner, a smaller profile is suited to percutaneous delivery (Pet. 51), but Gerber’s lead is implanted via an open surgical procedure (Ex. 1010, 1:7–15, 5:32–39). Accordingly, Petitioner has not persuaded us that a POSITA would have had a reason to include, in Gerber’s lead, Hauser’s tines situated according to Akerström’s arrangement.” slip op. at 24
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We credit Dr. Slavin’s testimony that the trigeminal cistern is a fluid- filled cavity that does not contain tissue for the tines to “engage” with, or be damaged by. Ex. 2029 ¶ 54–55. Dr. Slavin testifies that he is “a board certified neurosurgeon and [has] been in active clinical practice that includes all aspects of neuromodulation, spinal surgery and surgery for pain, including implantation of electrical stimulation devices, surgery on vertebral column including sacrum, trigeminal nerve surgery and so forth.” Ex. 2029 ¶ 5. Thus, Dr. Slavin has extensive knowledge of the areas around the trigeminal nerve. In contrast, Mr. Pless, an electrical engineer and product designer for electrical stimulations device in various areas of the body (Ex. 1003 ¶¶ 3–16), testifies that he believes there is tissue in the area of implantation in Young, but states “I'm not exactly sure what that tissue would be.” Ex. 2026, 123:21–23. Thus, we do not credit Mr. Pless’s testimony that Young’s tines can be damaged because of the body tissue 16 Hauser, discussed in the next ground, teaches tines on the distal most end which impliedly would be advanced out of the introducer, before advancement and placement of the electrode. Ex. 1013, 4:1–3, 4:26–51, Figs. 1, 6. present in the area of implantation of Young. As noted previously, the Petition relies exclusively on Young for teaching this method step of claims 1 and 14.” slip op. at 16
Patent outcomesUS 8,036,756 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,036,756 - Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.No claims unpatentablePTAB · Jul 14, 2023 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1–4 and 8–12 were not shown unpatentable because Petitioner did not prove the asserted anticipation or obviousness grounds by a preponderance of the evidence.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends, with accompanying declaration testimony, that [t]he level of ordinary skill encompassed a team of people, having a person with a Ph.D. or M.D. and five years of clinical and/or research experience treating diseases of the kidneys and circulatory systems and a person with at least a Bachelor’s degree in biomedical engineering or a related field and at least five years of experience designing catheter-based ablation systems. Pet. 40 (emphasis omitted) (citing Daft Pet. Decl. ¶¶ 64–68). Patent Owner responds that, “[f]or purposes of this proceeding, [Patent Owner] does not object to the definition of a person of ordinary skill in the art (‘POSITA’) proffered by Petitioner[] and adopted by the Board at institution as the result remains the same regardless of the definition—the Challenged Claims are valid.” PO Resp. 16; see also Dec. Inst. 15–17 (adopting, for purposes of institution, Petitioner’s proposed definition of the person of ordinary skill in the art). In addition, however, Patent Owner proposes a different level of ordinary skill in the art “should the Board believe that the difference in definition impacts the outcome” of this proceeding.8 PO Resp. 16. Both Petitioner and Patent Owner discuss how” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to transmit ultrasound energy waves to target renal neural fibers” (claim 1, element 1d) and “configured to [perform certain functions] to the target neural fibers” (claims 3, 4, 8, and 9). See Pet. 23–25; PO Resp. 17–22; Pet. Reply 10; PO Sur-reply 1–2. Petitioner asserts that the phrase “configured to” should be construed as “able to.” Pet. 23; see Pet. 23–24 n.5 (discussing how “able to” has the same meaning as “capable of”). Patent Owner responds that “[t]he Board need not reach the construction of this term as Petitioner[’s] arguments fail under either construction, but to the extent a construction is required, ‘configured to’ should be construed as ‘designed to.’” PO Resp. 18. Based on the complete record, we do not discern a need to construe explicitly this phrase because doing so would not change the result of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“the alleged motivation to use the device of Acker in Levin’s renal neuromodulation method. As noted by Patent Owner, after introducing Webster (by patent number), Levin states that “[s]imilar catheter based apparatus can be used to ablate the renal nerve with an intent to treat [Chronic Renal Failure].” Ex. 1004 ¶ 64 (emphasis added) (cited at PO Resp. 39 (discussing how “Levin explicitly qualif[ies] its statement by referring to ‘similar’ (not identical) catheters”)). But neither Petitioner nor its declarants have established that Acker’s ultrasound catheter is in fact “[s]imilar” to that in Webster in a manner that would support the view that one of ordinary skill in the art would have understood that Acker’s catheter could be used to “ablate the renal nerve with an intent to treat [Chronic Renal Failure]” as disclosed in paragraph 64 of Levin—i.e., to perform Levin’s renal neuromodulation method. See id. Dr. Mendelsohn states that Acker’s use of ultrasound-based ablation falls within the “any thermal means” disclosure in Webster (see Ex. 1052, 3:40–42), but Dr. Mendelsohn does not address why Acker’s ultrasound catheter is “[s]imilar” to the catheter in Webster (even after expressly noting the presence of that statement in Levin). See Mendelsohn Decl. ¶ 71 (“Moreover, Webster teaches transvascular nerve ablation using RF thermal ablation or ‘any thermal means’ and Levin teaches catheters similar to Webster’s can be used for renal denervation. Ultrasound ablation disclosed in Acker is a ‘thermal means’ of ablation.”).” slip op. at 21
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“(2) Objective Indicia of Nonobviousness We next turn to Patent Owner’s objective evidence of nonobviousness. Patent Owner alleges (1) unexpected results and skepticism, (2) copying, (3) praise, and (4) long-felt but unsolved need and failure of others. See PO Resp. 60–68; PO Sur-reply 25–27. Petitioner responds. See Pet. Reply 36–37. We have considered the evidence and argument presented by both parties, but do not address the issues in detail. See Alza Corp. v. Mylan Labs., Inc., 391 F.3d 1365, 1373 n.9 (Fed. Cir. 2004) (“Because [patent challenger] has not made a prima facie case of obviousness, we need not address the parties’ assertions regarding the district court’s discussion of secondary considerations.”).” slip op. at 31
Patent outcomesUS 8,845,629 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,845,629 - MG Freesites Ltd v. Scorpcast, LLCNo claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00512 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 5–8, 10, 11, 15–17, 20, 21, and 25–28 were not shown unpatentable because the asserted grounds failed to establish required claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a skilled artisan “would have had a Bachelor’s degree in Electrical Engineering, Computer Engineering, or Computer Science (or equivalent) plus approximately two years of work experience with technologies relating to content annotation and/or content sharing among multiple users.” Pet. 16–17 (citing Ex. 1002 ¶¶ 1–28). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. See PO Resp. 9. We apply Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ‘463 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with the determination in IPR2020-01697 that not all areas in the recited “scrubber area” must perform scrubbing functionality for the following reasons. First, claim 1 recites “the scrubber area comprising a scrubber that includes a draggable scrubber control that indicates video playback progress via a scrubber timeline . . . and which is manipulable to control playback of the first video file by dragging the scrubber control.” Ex. 1001, 50:61–67. The use of the open-ended transition “comprising” indicates the scrubber area may include more than the draggable scrubber control. Second, the Specification of the ’463 patent describes “scrubber area” as including a “scrubber bar” and optionally “an area adjacent to the scrubber bar.” Id. at 2:48–54. But, the description of the optional area the adjacent area must include scrubbing functionality. See id. Third, our determination that the area adjacent the scrubber control does not necessarily include scrubbing functionality is consistent with Figure 10 of the ’463 patent where the right-hand side of scrubber area 1002 includes items unrelated to scrubbing functionality, e.g., volume control.10 For the foregoing reasons, we do not adopt the EDTX construction of scrubber area because doing so would require us to read a limitation into “scrubber area” that, in our view, is not supported by the evidence.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Pet. 46. We note, however, that Roberts does not use the terms “scrubber” or “scrubber area.” See generally Ex. 1004. Dr. Porter testifies that the red rectangles added to Figures 9 and 13 represent a “scrubber area” but, he cites no persuasive evidence from Roberts to support his opinion concerning the size and shape of the alleged scrubber areas in Roberts’ Figures 9 and 13, nor does he explain why images 904 and 1004 are “adjacent” the timeline. Ex. 1002 ¶¶ 78–79. Therefore, his testimony is entitled to little, if any, weight. See 37 C.F.R. § 42.65(a). In order to satisfy this limitation, Petitioner creates different size scrubbing areas in Figures 9 and 13 of Roberts to fit its obviousness theory. Image 904 in Roberts’ Figure 9 is near the timeline but does not border the timeline. In addition, only one image, not the first plurality of images, is shown in the scrubber area Petitioner identifies in Figure 9. In Roberts’ Figure 13, images 904 and 1004 are shown within Petitioner’s larger proposed scrubbing area, but neither image borders the timeline. In Figure 13, image 904 is further from the timeline than image 1004 and further from the timeline than in Figure 9. Ex. 1004, Figs. 9, 13. Petitioner, however, fails to explain why image 904, which is positioned differently in Figure 9 and Figure 13, is adjacent the timeline in both. See Pet. 45–48.” slip op. at 34
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Analysis The language of limitation 1.5 recites that “at least partly in response to detecting that a user . . . select[s] the first image . . . causing the playback of the first video file to jump to a segment of the first video file corresponding to the first image.” Ex. 1001, 51:1–11. Both parties agree that this language imposes a temporal requirement that the user selects the first image and, then after the user selection, the playback of the first video file jumps to a segment of the first video file corresponding to the first image. Tr. 58:8–18, 109:9–10.” slip op. at 48
Patent outcomesUS 9,703,463 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,703,463 - Dji Europe B.V. v. Daedalus Blue LLCNo claims unpatentablePTAB · Feb 3, 2022 · IPR2020-01475 · APJ Arthur M Peslak · IPR · Final written decision
Claims 7–12 were not shown unpatentable because the evidence did not establish the claimed algorithm selection over Sanders or motivation to combine Duggan with Pilley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a skilled artisan “would have had a bachelor’s degree in aeronautical engineering, electrical engineering, computer science or equivalent training and experience, and at least two years of experience in the field of unmanned vehicles.” Pet. 7–8 (citing Ex. 1003 ¶ 20). Petitioner further contends that “[a]dditional work or research experience can substitute for less or different education, and vice-versa.” Id. at 8. Patent Owner appears to apply Petitioner’s level of ordinary skill in the art. See PO Resp. 17–18. Based on the complete record, we adopt Petitioner’s proposed level of ordinary skill in the art because it comports with the level of skill reflected in the ’232 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Because the Petition implicitly applies the same construction proposed by Patent Owner in both of grounds 1 and 2, there is no dispute between the parties. Consequently, we evaluate the Petition using Patent Owner’s construction of “selecting.” 37 C.F.R. § 42.104 (b)(3) (the Petition must contain a statement “[h]ow the challenged claim is to be construed”); see also 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’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“First, Petitioner and Dr. Hansman rely heavily on Duggan’s disclosure that its VACS architecture is “plug-n-play.” Pet. 58; Ex. 1003 ¶ 238; see also Tr. 9:12–20 (arguing “how simple the combination would be”, “Duggan has designed such that additional components can be modularly plugged into the control architecture”, “Duggan talking about how things are just plug and play”). This argument appears to assume that a skilled artisan is an automaton and any modular collision avoidance system that could be plugged in would suffice for obviousness. However, the test is not whether a skilled artisan could plug Pilley’s air collision detection process into Duggan but rather whether a skilled artisan would have done so. In that regard, Dr. Kaputa testifies to the “difference between creating a modular function that ‘plugs-n-plays’ with an intelligent synthesizer (as discussed by Duggan) and a component such as a GPS-based collision avoidance system that relies on zone databases constructed from time varying position and state information provided by other aircraft in the region.” Ex. 2011 ¶ 80. Among the reasons cited by Dr. Kaputa to support his opinion of a difference is a skilled artisan would “have to ensure that all aircraft flying within the vicinity of the UAV also adhere, subscribe, and transmit data to the new GPS-based collision avoidance system in order for it to be effective.” Id. (citing Ex. 1010, 93:41–94:60); see also Ex. 1005, 76 (“It is especially important for each vehicle’s CAS to know whether the other vehicle are cooperating with them in collision avoidance.”).” slip op. at 35
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Dr. Kaputa testifies “a [skilled artisan] would not use the words maneuver and algorithm interchangeably. Indeed, not even Sanders does so and instead makes clear that a collision avoidance algorithm includes maneuvers.” Ex. 2011 ¶ 57 (citing Ex. 1005, 141 et seq.). Dr. Kaputa further testifies “a maneuver can be executed via an algorithm, however, in the case of Sanders there is a clear delineation between maneuvers and collision avoidance algorithms.” Id. Dr. Kaputa further testifies: Sanders further states “Many collision avoidance algorithms in the literature seem to choose a maneuver direction with little thought of justification. As we will see, however, this decision can depend on many factors. Collision avoidance maneuvers usually fall into one of four categories: horizontal maneuvers, vertical maneuvers, speed changes, and combination maneuvers. EX. 1005 at 65 (emphasis in original). Further, “Most algorithms in the collision avoidance literature seem to use horizontal resolution maneuvers.” Id. at 65–66. Thus, it is clear that for a [skilled artisan], a collision avoidance maneuver is not a collision avoidance algorithm, rather it is an instruction contained within a higher level collision avoidance algorithm that may be performed under the right circumstances. Id. ¶ 60. Petitioner submits no evidence to rebut this testimony by Dr. Kaputa. Further, this testimony is consistent with Dr. Hansman’s declaration testimony. See Ex. 1003 ¶ 106 (testifying the “the continuous algorithm determines when to maneuver up . . . or down”). In addition, Sanders discloses its continuous algorithm contains a step where it “Compute[s] collision avoidance maneuver.” Ex. 1005, 149. We therefore credit Dr. Kaputa’s testimony because it is based on corroborating evidence from Sanders over Dr. Hansman’s unsupported deposition testimony. To the extent that Petitioner contends that these maneuvers correspond to collision avoidance algorithms in the ’232 patent (Pet. Reply 8–9), Petitioner’s contention is not persuasive because it is attorney argument not supported by evidence. Consequently, Petitioner fails to establish with evidence that” slip op. at 18
Patent outcomesUS 7,228,232 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,228,232
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.