- 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 - Apple Inc. v. Papst Licensing GmbH & Co. KGNo claims unpatentablePTAB · Apr 13, 2018 · IPR2016-01863 · APJ Miriam L Quinn · IPR · Final written decision
The Board held claims 1, 4, 6-8, 10, 11, 14, 20, 21, 23, 30, 34, and 35 not shown unpatentable under the asserted § 103 grounds for failure to establish a sufficient reason to combine …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find the Zadok testimony in this regard persuasive as it presents more than just the educational level of a person of ordinary skill in the art. Petitioner’s proposal is more helpful as it identifies the familiar objects of the technology used by a person of ordinary skill at the time of the invention: operating systems (e.g., MS-DOS, Windows, Unix) and their associated file systems (e.g., a FAT file system), device drivers for computer components and peripherals (e.g., mass storage device drivers), and communication interfaces (e.g., SCSI and PCMCIA interfaces). Ex. 1003 ¶ 28. We, therefore, determine that Petitioner’s level of ordinary skill in the art is appropriate.” slip op. at 11
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“required to enable the transfer of files from the ION node to the workstation. In this case, we have testimony from Petitioner’s expert opining that the emulation of the ION node as a disk would lead a person of ordinary skill in the art to understand Pucci as accomplishing the file transfer using “existing SCSI hard disk drivers.” Ex. 1003 ¶ 133. On the other hand, we have testimony of Mr. Gafford that explains Pucci’s workstation program as being involved in the request of the A-to-D converted data by “implement[ing] specific functions by enabling the reading or writing of specific block addresses within the ION drive.” Ex. 2006 ¶ 65. That is, Dr. Zadok’s view of Pucci is that once the ION system is set up to emulate a hard disk, no other software is required to transfer data. In contrast, Mr. Gafford’s testimony does not negate Pucci’s use of the SCSI protocol, but ascribes to the workstation application control over the data read, such that the software is required to enable the transfer data. In this regard, we credit the testimony of Mr. Gafford over the testimony of Dr. Zadok, as it is more consistent with the disclosure of Pucci. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (stating that it is “within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); see also, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). As we stated above with regard to the file system limitation, Pucci’s principle of operation” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In view of Patent Owner’s arguments and evidence, we are not persuaded that a person of ordinary skill in the art would have had reason to combine the teachings of Pucci and Kepley, as asserted by Petitioner, to achieve the challenged claims. Our determination is based on two findings: a) First, we determine that Pucci does not teach or suggest a reason for the use of a file system for storing digitized voice messages at the ION node; and b) Second, we determine that achieving computer-to-computer file transfer, as taught by Kepley, and the “traditional” nature of the substitution proffered by Petitioner, are not sufficient motivations to modify Pucci, in light of the changes to Pucci that would impermissibly alter Pucci’s principle of operation.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner
“Petitioner also argues that the ’746 patent works the same way as Pucci in this regard, and, therefore, buffering in real time could be handled as a file even though there is no file at the acquisition time. Reply, 8; Tr. 7 Claim 1 of the ’746 patent, for instance, requires that the “digitized analog data is stored in a file system of the data storage memory as at least one file of digitized analog data,” and Petitioner has identified the “digitized analog data” as the data from the A-to-D converters. Pet. 2728 (emphasis omitted). 24:1221. This argument risks analyzing Pucci in hindsight, with the knowledge of what is disclosed in the ’746 patent. It would be improper, absent any other evidence, for us to rely on the ’746 patent disclosure regarding real-time input to ascertain whether Pucci suggests handling its raw data in the same way. See Nike, Inc. v. adidas AG, 812 F.3d 1326, 1344 n.5 (Fed. Cir. 2016) (“We are troubled by the Board’s citation to the ’011 patent’s written description and the corresponding appearance of using the ’011 patent to find claim 49 unpatentable.”). Instead, as stated above, we rely on what Pucci teaches to a person of ordinary skill in the art at the time of the invention, without the benefit of the ’746 patent disclosure. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (“It is difficult but necessary that the decisionmaker forget what he or she has been taught . . . about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art.”).” slip op. at 25
Patent outcomesUS 8,504,746 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,504,746 - Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentablePTAB · Oct 31, 2017 · IPR2017-00364 · APJ Jason J Chung · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 unpatentable because it did not establish a reasonable expectation of success combining the cited references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are partially consistent with Patent Owner’s view, but, nonetheless, Patent Owner contends that an ordinarily skilled artisan would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015, 84:13–20). We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 4–5. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1, 21, and 25 by instead repeating that “modeling, simulation, and testing” leads to a reasonable expectation of success (Pet. 28); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Kenneth A. Zeger, Ph.D. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–169. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 121–134; Ex. 2017 ¶¶ 165–167. Instead, Petitioner simply asserts, in a conclusory manner, that “[b]ecause the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20– 144:3. Although Dr. Creusere opines that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite” slip op. at 17
Patent outcomesUS 9,116,908 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,116,908 - Adidas AG v. Nike, Inc.No claims unpatentablePTAB · Oct 19, 2017 · IPR2016-00922 · APJ James B Arpin · IPR · Final written decision
Petitioner failed to prove claims 1–9, 11–19, and 21 unpatentable as obvious over Reed and Nishida because it did not adequately explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 17–18. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“unitary construction” means “a textile element having a unitary construction and having a first area and a second area.” Pet. 6. As Petitioner notes, this is the construction that this panel gave to the same term appearing in the substitute claims of the ’011 patent. adidas AG v. Nike, Inc., Case IPR2013- 00067, slip op. at 16–17 (PTAB Apr. 28, 2014) (Paper 60). We further note that the ’749 patent’s Specification provides that “[a]s defined for purposes of the present invention, unitary construction is intended to express a configuration wherein portions of a textile element are not joined together by seams or other connections, as depicted with textile element 40 in FIG. 8.” Ex. 1001, 6:42–46 (emphasis added); see IPR2013-00067, Ex. 1002, 6:41–46 (identical disclosure). The ’011 patent and the ’749 patent share the same Specification (apart from their claims), neither party contested our construction of this term in the appeal of our decision in the inter partes review of the claims of the ’011 patent, and Patent Owner does not contest Petitioner’s proposed construction of this term in this proceeding. Therefore, in view of the express definition of the phrase “unitary construction” in the Specification of the ’749 patent, we adopt Petitioner’s proposed construction as the broadest reasonable interpretation for this term. See Tr. 20:5–13, 37:11–17.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “wide-tube circular knitting machine” (Claims 9 and 19) We determine that the broadest reasonable interpretation of the term “wide-tube circular knitting machine” is “a circular knitting machine forming body garment sized, tubular textile structures, including those having a diameter that ranges from 10 inches to 20 inches.” See Inst. Dec. 9–11. Neither party contests this construction. See Tr. 20:5–13, 37:11–17.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8 Patent Owner contends that Reed is not analogous art. PO Resp. 34–36. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 34–35. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–13; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 18
Patent outcomesUS 8,266,749 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,266,749 - Adidas AG v. Nike, Inc.No claims unpatentablePTAB · Oct 19, 2017 · IPR2016-00921 · APJ James B Arpin · IPR · Final written decision
Petitioner failed to prove claims 1–13 unpatentable as obvious over Reed and Nishida because it did not show a reason to combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Initially, Patent Owner contends that Petitioner has failed to consider appropriate factors identified by our reviewing court and utilized by other panels to assess the level of ordinary skill in the art. Id. at 12–13. We agree with Petitioner that it is not necessary to consider every factor or to weigh the factors equally in order to assess the level of ordinary skill in the art. Reply 2 (quoting In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). Here, we may rely on Petitioner’s declarant’s testimony (Ex. 1003 ¶ 34) and the teachings of the prior art to evaluate Petitioner’s assessment of the level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In particular, Reed and Nishida identify the types of problems encountered in the art prior art solutions to these problems, and the sophistication of the technology. E.g., Ex. 1006, 1:13–55; Ex. 1009, 1:10– 36; see, e.g., Ex. 1007, 1:8–32, 2:12–64; Ex. 1008, 1:11–54; Ex. 1010, 145– 160; see also Ex. 1010, Preface (“The aim of this book is to combine in a single volume the fundamental principles of weft and warp knitting in such a manner that its contents are useful to readers in education, industry or commerce. It thus [fulfills] the long felt need for a comprehensive up-to-date textbook explaining this important sector of textile technology.”). Patent Owner contends that the level of ordinary skill in the art is “low” (PO Resp. 13), but it is not clear whether Patent Owner further contends that Petitioner’s assessment is deficient because Petitioner fails to argue that a person possessing such a “low” level of ordinary skill in the art also would have “experience using knitting technologies to create knitted footwear uppers” (id. at 13–14) or whether the inclusion of such skill would raise the “low” level of skill in the art (id. at 14). Alternatively, Patent Owner may merely be contending that Petitioner’s declarant fails to qualify as a person of ordinary skill in the art. Id. at 14 (“If it was too ‘dangerous’ for Mr. Holden with his nearly forty years of experience, a person with just a “few years of experience” would not have had any knitting experience, let alone experience using knitting technologies to create uppers.”); see Tr. 62:17–22. Patent Owner is not required to help us assess the level of ordinary skill in the art and does not do so here. See PO Resp. 18 (“Petitioner may criticize NIKE for not submitting an expert declaration. But it is Petitioner’s burden to prove unpatentability; it is not NIKE’s burden to prove patentability.”). In response to Patent Owner’s contentions, Petitioner argues that the level of ordinary skill in the art is not low and that hands-on knitting experience is not required. Reply 2–3. Petitioner further argues Patent Owner has not required knitting experience in its previous assessment with respect to a related patent of the level of ordinary skill in the art. Id. (citing IPR2013-00067, Ex. 2010 ¶ 52). Based on the record before us and to the extent necessary, we again adopt Petitioner’s assessment of a person of ordinary skill in the relevant art. Inst. Dec. 8 n.3.” slip op. at 10
- Expert testimonyPetitioner expert creditedMixed
“document.” Reply 3 (quoting Ex. 2004, 12:7–11); see Ex. 2004, 12:12– 13:16. Declarants often have assistance in authoring their declarations. See Square, Inc. v. Think Computer Corp., Case CBM2014-00159, slip op. at 26–27 (PTAB Nov. 27, 2015) (Paper 47) (“the mechanics of declaration preparation is ‘a waste of time, both for the witness and the Board’”). Mr. Holden was not required to be the sole author of his declaration. Rather, the relevant issue regarding the preparation of Mr. Holden’s declaration is whether Mr. Holden adopted the content of his declaration as his own. Here, he has. See Ex. 1003 ¶¶ 3, 4, 209. As Patent Owner suggests, we weigh Mr. Holden’s declaration testimony in light of his testimony on cross-examination. Although Mr. Holden indicated that he was unable to define or was unfamiliar with certain terms during cross-examination, he did name references, including Spencer (Ex. 1010), that he could and would consult to obtain the answers to specific questions. Tr. 63:20–64:13. Moreover, Patent Owner’s counsel acknowledged that persons of ordinary skill in the art (or declarants) do not have to have all of the knowledge relevant to their testimony in their heads and that they are allowed to consult references, as appropriate. Id. at 63:20– 64:2. Although Patent Owner notes that Mr. Holden apparently was not aware of Spencer until this inter partes review (see Ex. 2004, 77:1–3; Tr. 64:1–6), his learning of and relying on a new reference alone is not sufficient reason to disregard, i.e., give no weight to, Mr. Holden’s testimony. Further, the issue here is not whether Mr. Holden is a person of ordinary skill in the art, but rather whether his testimony is of value to the panel. See Tr. 64:15– 18. Thus, as indicated in the discussion below, we determine the appropriate weight to give to Mr. Holden’s testimony.” slip op. at 31
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“8 Patent Owner contends that Reed is not analogous art. PO Resp. 29–31. In particular, Patent Owner contends that Reed is not from the same field of endeavor as the challenged claims and that Reed’s teachings are not reasonably pertinent to the particular problem with which the recited methods are involved. Id. at 29–30. Because Reed is directed to the manufacture of all types of garments, including footwear (Reply 12–14; see Ex. 1006, 1:33–44), and Reed is related directly to preparation of garments layouts from a knitted textile structure (Reply 14–15; see Ex. 1006, 2:29– 35), we are persuaded that Reed is analogous art to the challenged claims.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“i. Failure of Proof Petitioner bears the burden of proving by a preponderance of the evidence that the challenged claims are unpatentable. This includes demonstrating by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. As noted above, Petitioner argues that a person of ordinary skill in the art would have had at least three reasons to combine the teachings of Reed and Nishida to achieve the methods recited in the challenged claims. Pet. 12–14; see Tr. 10:12–11:12. First, Petitioner argues that, because Reed teaches that its methods are applicable to “all types of garments” (Ex. 1006, 5:56–57 (emphasis added); see Ex. 1003 ¶ 131), a person of ordinary skill in the art would have had reason to apply the teachings of Reed to the processes and shoe parts of Nishida. Pet. 13 (citing Ex. 1003 ¶ 133). Second, Petitioner argues that, because both Reed and Nishida teach the advantages of reducing cost through the use of computer-controlled knitting machines, a person of ordinary skill in the art would have had reason to combine their teachings. Pet. 13 (citing Ex. 1003 ¶¶ 134–135). Third, Petitioner argues that a person of ordinary skill in the art would have had reason to apply Reed’s methods for producing textile elements, from which to produce garments, to produce Nishida’s shoe upper patterns. Id. at 13–14; see KSR, 550 U.S. at 417. However, none of these reasons or any other reason identified by Petitioner addresses the differences between Reed and Nishida, specifically pre-seaming.” slip op. at 34
Patent outcomesUS 7,814,598 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,814,598 - 3shape Medical A/S v. Sirona Dental Systems GmbHNo claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00481 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–10 were not shown unpatentable: Mushabac did not anticipate claims 1–5 and 9–10, and the asserted combinations did not render claims 1–8 obvious.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We determine that only the following claim phrase requires explicit construction for purposes of this Decision. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (internal citation omitted)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner provides evidence that a person of ordinary skill in the art (“POSA”) is someone with a D.M.D. (Doctor of Medicine in Dentistry or Doctor of Dental Medicine) or D.D.S. (Doctor of Dental Surgery) and at least several years of experience with 3-D technology used in dental implant treatment, planning, and surgery. Pet. 9–10 (citing Ex. 1004 ¶¶ 63–66). Alternatively, such a person may have a computer engineering degree or be a trained dental laboratory technician having substantial experience with 3-D technology and software applications used in dental implant treatment, planning, and surgery. Id. Patent Owner has accepted Petitioner’s definition of a POSA for purposes of this IPR. We adopt and apply Petitioner’s definition of a POSA in this Decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“2. Analysis of “optical measuring of the visible surfaces of the jaw” Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Dr. Ganz agreed under cross-examination that “Mushabac optically measures the teeth [a]nd then it uses … bone sounding to measure the surfaces of the jawbone.” Ex. 2026, 252:11–20. When directly asked where a three-dimensional optical measuring of visible surfaces of the jaw was “stipulated” in Mushabac, Dr. Ganz could not identify any passage to support that assertion made in paragraph 100 of his Declaration. Id. at 248:16–252:20. We find Dr. Ganz’s cross-examination testimony to be highly persuasive and consistent with the disclosures in Mushabac and the testimony of Dr. Erickson. For the reasons given above, we determine that Mushabac does not expressly disclose an “optical” (light-based) measurement of the “visible surfaces of the jaw” in three dimensions, as recited in claim 1 of the ’006 patent.” slip op. at 16
Patent outcomesUS 6,319,006 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,319,006 - Daifuku Co., Ltd. / Daifuku America Corp. v. Murata Machinery, Ltd.No claims unpatentablePTAB · May 3, 2016 · IPR2015-00088 · APJ Ken B Barrett · IPR · Final written decision
Claims 1, 2, 5, 11–16, 19, 20, and 25–36 were not shown unpatentable as obvious over JPAP ’213 and JPAP ’237 because Petitioner failed to establish a reasoned motivation to combine.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890 (2016). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). No issue in this Decision requires explicit construction of any claim term. Accordingly, for purposes of this Decision, we do not provide explicit construction for any claim terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3 Although the parties argue for certain differences in the level of skill in the art, the differences are not material to our decision. Therefore, we apply Petitioner’s proffered skill level of one having at least an undergraduate degree in industrial or systems engineering and 3–5 years of experience designing systems and processes using automated material handling systems. Pet. 11 (citing Ex. 1028 ¶ 38); PO Resp. 8–9 (citing Ex. 2013 ¶ 15).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“paragraph 7 as providing the motivation for one of ordinary skill in the art to add the lateral transfer device from the conveyance truck of JPAP ’237 to moving body 3 in JPAP ’213 Figure 1. Dr. Sturges, moreover, does not provide a reasoned analysis based on the disclosures and embodiments of JPAP ’213 and JPAP ’237, in the context of the knowledge and skill level of a degreed engineer with 3–5 years of experience developing automated material handling systems. Dr. Sturges does not explain why and how one of ordinary skill would have selected the lateral transfer device from the conveyance truck of JPAP ’237 for use with moving body 3 in JPAP ’213 Figure 1. Ex. 1028 ¶¶ 222–226. For example, there is no explanation of why one of ordinary skill would use the lateral transfer device from JPAP ’237, given that mechanically moveable storage tables already are used to effect lateral transfer of articles B on both sides of moving body 3 in JPAP ’213 Figure 1. See id. Even if the proposed modification were to be made, Dr. Sturges does not account for counterweight 51 in JPAP ’237, which extends laterally to the opposite side of extendable arm 42, or explain why the counterweight would not interfere with the articles and storage tables located on the opposite side of moving body 3 in JPAP ’213 Figure 1. Id.; Mot. Observ. 2–3 (quoting Ex. 2039, 70:22–71:15 (“Q. [Y]ou did not provide any testimony that the hoist vehicle of the JPAP ’213 reference can utilize the robotic arm on one side while maintaining the swinging shelves on the other side; correct? A. That’s correct.”)). To the extent Petitioner argues that Dr. Sturges has provided evidence on this point (Tr. 83:9–13), such evidence has not been cited in the Petition or the Reply, nor have we located such evidence. Pet. 36–49 (citing Ex. 1028 ¶¶ 218–272); Reply 11– 12 (citing Ex. 1028 ¶¶ 222–26); Mot. Observ., 1–2 (quoting Ex. 2039, 71:23–72:9 (“Q. [Y]ou did not address whether it would have been necessary to change the functional relationship between the swinging shelf and the hoist vehicle of the JPAP ’213 reference; correct? A. That’s accurate.”)).7” slip op. at 21
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We also credit the Declaration testimony of Dr. Bottoms and Patent Owner’s translator, Mr. Yazaki, and the deposition testimony of Petitioner’s translator, Mr. Chu. Mr. Chu testifies that JPAP ’213 paragraph 7 does not “say anything about the transfer means moving an article laterally.” Ex. 1035, 30:23–31:5. Mr. Yazaki’s Declaration states that paragraph 7 expresses only that “the transfer means is on the moving body side, as opposed to being on the article retaining unit side” of the conveyance system and “not [] that the transfer means is on a lateral surface of the moving body facing the article retaining unit.” Ex. 2019 ¶ 5. Dr. Bottoms testifies that a person of ordinary skill would have understood the translated phrase “on the side of the moving body” in paragraph 7 to refer to the transfer means (the hoist) being located on the moving body side of the system rather than the storage side of the system, not physically positioning the transfer means on the lateral side of moving body 3. Ex. 2013 ¶ 114. Dr. Bottoms also explains how JPAP ’213 distinguishes between vertical movement of the retaining unit transfer means and lateral movement of the article movement means MS. Id. ¶ 116 (citing Ex. 1005 ¶ 22). Dr. Sturges’ Declaration testimony, relied upon by Petitioner to rebut Patent Owner’s argument and evidence (Reply 8–9, citing Ex. 1028 ¶¶ 142–44), provides no analysis of paragraph 7, claim 4, or the relevant description in JPAP ’213. Rather, it mimics the error of the Petition in asserting that JPAP ’213 “teaches a system where the vehicle does the work of transferring the pods B laterally to and from the tables 11.” Ex. 1028 ¶ 142.5 Therefore, for the reasons given above, we find that JPAP ’213” slip op. at 14
Patent outcomesUS 7,165,927 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 7,165,927
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.