• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentable
  PTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.

  In the decision

  …information.” Id. at 16 (citing Ex. 2014 ¶ 80). In its Reply, Petitioner argues that paragraph 74 is just one nonlimiting embodiment and in no way a teaching that target printer selection must occur after requesting the data tag. Pet. Reply 5–6. As we discuss in more detail below, we find…

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8

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

    “We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10

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

    “We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29

  Patent outcomesUS 11,886,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,886,774
• Netflix, Inc. v. Divx, LLCAll claims unpatentable
  PTAB · Sep 21, 2026 · IPR2020-00558 · APJ Kevin F Turner · IPR · Remand

  Claims 1–24 are unpatentable as obvious over Chen, Lindahl, and Hurst because the combination teaches the claim limitations and has motivation to combine and a reasonable expectation of success.

  In the decision

  …As explained by the Supreme Court in KSR International Co. v. Teleflex Inc., Often, it will be necessary for a court to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and the background knowledge…

  RulingsRemand decision

  • RemandOther

    “On February 13, 2026, the Federal Circuit issued a decision in the appeal vacating the Second Final Decision as to all challenged claims and remanding for further proceedings. Netflix II, 7. The Federal Circuit reversed the Board’s claim construction, vacated the Board’s decision, and remanded for further proceedings consistent with the claim construction the 6 The First Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42), where we granted-in-part, denied-in-part, and dismissed-in-part that Motion. See 1st Final Dec. 28–37. Our determinations on that Motion were a part of Petitioner’s appeal to the Federal Circuit. See Paper 52. As the Federal Circuit did not address this aspect of the First Final Written Decision, we determine our conclusions with respect to that Motion remain undisturbed. Federal Circuit adopted. Id. The Federal Circuit issued its mandate on March 23, 2026.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in video streaming and media security or . . . a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in video streaming and media security.” Pet. 14–15 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not refute Petitioner’s assessment and appears to apply such a level of skill in its arguments against combining Chen, Lindahl, and Hurst to teach or suggest the elements of the challenged claims. See generally PO Resp. As such, we continue to adopt and apply Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Inst. Dec. 6; 1st Final Dec. 6; 2nd Final Dec. 10.” slip op. at 7

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

    “In response, we conclude that the most natural reading of limitation [l] results from examination of the entire limitation: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.” Ex. 1001, 27:54–57. The “within” most naturally connotes where the encrypted portions of frames of video occur, as opposed to determining where the encryption information may be located. Patent Owner’s interpretation is not wrong, i.e., the limitation could be read as Patent Owner suggests, leading to a narrower construction, but we are not persuaded that the construction of limitation [l] must be so limited, on the basis of the words themselves. We continue to reject Patent Owner’s interpretation that limitation [l] requires locating encryption information within the requested portions of the selected stream of protected video. See Inst. Dec. 27–30; 1st Final Dec. 8. Although it is apparent that encryption information can be found within the requested portions, we are not persuaded that the claim language or ’588 Patent implicitly or explicitly requires such a relationship. Likewise, although embodiments disclosed in the Specification of the ’588 Patent are consistent with Patent Owner’s more restrictive construction, the Specification also is consistent with the more grammatically correct construction as well. Thus, we construe limitation [l] as requiring that the encrypted portions of frames of video be within the requested portions of the selected stream of protected video, but we do not construe limitation [l] as requiring that the encryption information be within the requested portions of the selected stream of protected video.” slip op. at 15

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

    “We are persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix I, slip op. at 9–10 (citing Pet. 17–19, 69–70). We agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41–15:60). We determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 30

  Patent outcomesUS 10,225,588 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentable
  PTAB · Aug 28, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 are unpatentable; substitute claims 30–49 were not reached.

  In the decision

  …(Patent 8,604,678 B2) An obviousness determination requires finding “both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of…

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21

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

    “lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success.” slip op. at 41

  • Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner

    “7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35

  Patent outcomesUS 8,604,678 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 8,604,678
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentable
  PTAB · Jul 10, 2026 · IPR2025-00147 · APJ Linda E Horner · IPR · Final written decision

  The Board found claims 1–6 and 8–20 not shown unpatentable under three obviousness grounds, principally because the proposed combinations did not establish a feasible curved battery or transparent potting encapsulating the components.

  In the decision

  …ordinary skill in the art would have been motivated to place Mestas’s device on the finger “to improve traction and prevent slippage” given Mestas’s teaching of a ribbed interior surface. Id. at 20 (citing Ex. 1002 ¶ 169; Ex. 1010 ¶ 152). Patent Owner argues that a person having ordinary skill in…

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶ 29). Petitioner also contends that a person of ordinary skill would have been “familiar with, e.g., sensor system design, including inertial and other motion sensor system design, and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 25. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’124 patent and the references cited in the Petition.” slip op. at 10

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

    “We need not reach the issue of whether the preamble is limiting for purposes of determining patentability of the challenged claims. Even were we to agree with Patent Owner that the preamble is limiting and the claims are limited to a finger-worn ring wearable computer device, Petitioner has relied on Schröder in each ground to disclose a “wearable computing device configured to be worn around a finger of a wearer.” Pet. 22 (Ground 1), 45 (Ground 2, relying on Yuen for adding the functionality of light sources with a photodetector, temperature sensors, and varying the sampling frequency of sensor data acquisition), 56 (Ground 3). We agree with Petitioner that Schröder discloses such a device. Thus, no explicit claim construction is necessary for this decision.” slip op. at 11

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

    “We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position for several reasons. First, the record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “would have to be reduced in size on the 6 There is no Exhibit 2022 in the record of this case. magnitude of 5-10x from its current size to fit in a ring of Schröder.” Resp. 38 (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Second, Petitioner relies on evidence in the Reply that Petitioner failed to specifically identify in the Petition. Compare Reply 3–5 (citing Ex. 1369 ¶¶ 7–14; Ex. 1079 ¶¶ 47, 71; Ex. 2022, 138:7–143:1; Ex. 1002 ¶¶ 96, 337; Ex. 2021, 12–13, 307:7–17; Ex. 2020, 212:6–214:13; Ex. 1081, 130:18–131:14; Ex. 1010 ¶ 168), 9 (referring back to Section § II.B.2) with Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99; Ex. 1010 ¶¶ 157, 163, 168, 201, Fig. 6). More specifically, while the portion of Dr. Anthony’s Declaration cited in the Petition (see Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99)) mentions the Technology Background Section V of his Declaration (Ex. 1002 ¶¶ 42–147), neither Petitioner nor Dr. Anthony sufficiently explains what evidence supports his opinion that it was feasible to incorporate batteries or battery-like devices into finger-rings, or how a person of ordinary skill in the art would have miniaturized a curved battery for incorporation into Schröder’s ring. Ex. 1002 ¶ 196 (describing that rechargeable batteries powering wearable electronic devices were “well-known by 2013” and “had also undergone significant advances in terms of miniaturization and energy density [that] made it feasible to incorporate batteries or battery-like devices such as supercapacitors into smaller form factors, such as finger rings, without sacrificing functionality” such as “lithium-polymer (Li-Po) batteries and solid-state batteries.”). Moreover, some of Petitioner’s citations in the Reply appear to be incorrect as there is no Exhibit 2022 of record in this case, as noted above. These issues undermine the strength of Petitioner’s showing by making it difficult to follow its reasoning, much less identify where in the record that reasoning finds support. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Third, even considering Petitioner’s new Reply arguments and” slip op. at 27

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We credit Dr. Mercier’s testimony over Dr. Anthony’s and agree that Dr. Anthony’s testimony fails to account for the constraints of a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶ 140. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’124 patent, we also have evidence that prior art “finger ring wearables up to the ’124 patent had used ‘coin’ type batteries.” Resp. 40 (citing Ex. 2018 ¶ 140). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would have looked to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 141. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura patent), Fig. 24; Ex. 2018 ¶¶ 74–84. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 85. We also agree with Dr. Mercier that Dr. Anthony’s testimony lacks evidence or a technical analysis of the power requirements for the various sensors he suggests including in a wearable device and the capacity of the proposed GMBPow battery. See, e.g., Ex. 1002 ¶¶ 94, 210, 214–17; Ex. 2018 ¶ 97. Moreover, Dr. Anthony does not address the issues with the batteries that are identified in the references he discusses. For example, Dr. Anthony does not address Lee’s disclosure that “direct coating of electrode slurry onto plain paper led to the occasional internal-shorting of the device due to the leakage of the electrode material through a large-sized hole in the paper.” Ex. 1019, 2415. In contrast, Dr. Mercier discusses the pitfalls the skilled artisan faced in developing finger-ring devices. See, e.g., Ex. 2018 ¶¶ 77–79 (discussing the issues Rhee’s and Asada’s large rings), 83 (identifying power requirements as a design constraint). For example, Dr. Mercier explains that “flexible or curved batteries include flexible packaging materials such as aluminum laminated films that house the electrodes and electrolyte” such that “once the battery packaging is added to a battery such as GMBPow and then placed within a housing (e.g., external housing shell and internal potting), the resulting device would have dimensions that are not suitable for a finger-worn ring.” Id. ¶ 96 (citing Ex. 2026).” slip op. at 34

  Patent outcomesUS 11,188,124 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,188,124
• Motorola Mobility LLC / Google LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentable
  PTAB · May 15, 2026 · IPR2025-00038 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–7, 10–13, 16, 17, 19, and 20 are unpatentable as obvious over Chin; the Board did not find them anticipated by Chin or Whitehorn.

  In the decision

  …2002 ¶ 194; Ex. 2011, 43:20–48:4); PO Sur-reply 17 (citing PO Resp. 55–56). Patent Owner asserts that “[t]here was no general knowledge in the art teaching a POSITA to turn off/disable a screen based on whether the screen was facing a user.” PO Resp. 55–56 (citing Ex. 2009 ¶¶ 4–5, 73, 75); PO…

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that [a] person of ordinary skill in the art . . . (‘POSITA’) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field plus at least two years of work or post-graduate experience in image capture, image processing, image display, user interfaces, or a related field. Additional education could offset a lesser amount of experience and vice versa. Pet. 16. Patent Owner accepts Petitioner’s definition. See PO Resp. 25. We adopt Petitioner’s undisputed definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’842 Patent Specification and the asserted prior art.” slip op. at 9

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

    “We agree with Petitioner that claim construction is unnecessary. As demonstrated in the analysis provided below addressing this claim limitation in view of the prior art, we need not explicitly construe “wherein in each image capture mode a display on the first or second screen is different.” 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))). Similarly, we need not construe any other claim terms or phrases to resolve the controversy between the parties.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner that Petitioner’s arguments relying on Kennametal are belated. A “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)6 at II.I. Thus, we need not consider Petitioner’s belated argument raised for the first time in the Reply. In any event, we agree that Kenneametal is inapplicable for the purpose of supplying a claim limitation missing from Chin’s disclosure. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017) (“Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.”). Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not 6 Available at www.uspto.gov/patents/ptab/trial-practice-guide. displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See generally Ex. 1004.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the theory of inherency was not raised in the Petition and is therefore waived. Compare Pet. 29–33, with Pet. Reply 11–15. In any event, we also agree that Petitioner’s speculation regarding the disclosure of Chin is insufficient to support a theory of inherency. See Pet. Reply 11–15. As explained above, Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See Ex. 1004. Speculation regarding the possibilities and probabilities of what is displayed on first display 51 in self-photographing mode, and what is displayed on second display 52 in outward-facing mode are insufficient to establish inherency. See In re Robertson, 169 F.3d at 745. For the forgoing reasons and based on the entire record developed during trial, the preponderance of the evidence does not support Petitioner’s showing that Chin discloses “wherein in each image capture mode a display on the first or second screen is different.” Accordingly, based on the entire record developed during trial the preponderance of the evidence does not support Petitioner’s showing that Chin anticipates claim 1.” slip op. at 20

  Patent outcomesUS 8,836,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,836,842
• Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · May 13, 2026 · IPR2025-00028 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–15 and 17–22 are unpatentable as obvious over the specified combinations of Shapero, Delseny, and, for certain claims, Hamady or Jones.

  In the decision

  …Cir. 2016) (stating that a party that asserts obviousness of a claim must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of…

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the DI, we addressed Patent Owner’s arguments disputing Petitioner’s proposed definition. DI 17–18 (citing Prelim. Resp. 11–12). We stated that for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. Id. at 18. After institution, Patent Owner states that, for purposes of this proceeding, it adopts the Board’s definition of a POSA. PO Resp. 12. Based on the entirety of the trial record, we maintain our finding of a POSA’s skill level.” slip op. at 9

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

    “Claim Construction In an inter partes review, we construe a claim term “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “A reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Id.” slip op. at 29

  Patent outcomesUS 10,036,012 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,036,012
• Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentable
  PTAB · Apr 15, 2026 · IPR2025-00186 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable under § 103 over Chang and Jin; the Board found the combination disclosed the claimed isolation portion and supported the challenged claims.

  In the decision

  …benefit from Jin’s gap-T isolation region.” Pet. 25. (citing Ex. 1003 ¶ 113). Patent Owner does not challenge Petitioner’s allegations regarding the teachings of Jin and Feldmann or that Jin and Feldmann suggest each limitation of claim 1 of the ’104 patent. See generally PO Resp. Instead, Patent…

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp; Sur-reply. In light of the complete trial record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art.” slip op. at 9

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

    “C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction. See generally PO Resp. As neither party proposes an express construction for our consideration and because we determine that an express claim construction is not necessary for us to render a decision in this matter, we do not construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “edge and offers little explanation of why the skilled artisan would apply Jin’s gap- T isolation region to both of Feldmann’s polysilicon and tunnel oxide layers. As noted above, Petitioner states that the skilled artisan would have included Jin’s gap-T isolation region in order to prevent shorting. Pet. 25. Petitioner’s reasoning is questionable—supported only by the conclusory testimony of Dr. Banerjee. Dr. Banerjee’s testimony offers no more evidentiary support than provided in the Petition. Compare Ex. 1003 ¶ 113, with Pet. 25. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380. We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 113 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001” slip op. at 18

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

    “base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 16

  Patent outcomesUS 9,722,104 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,722,104
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  In the decision

  …15, which first recites the claimed “detector assembly.” See Pet. 32–33 (quoting Ex. 1010 ¶¶ 86–87). Petitioner, however, also quotes there Reime’s teaching of “a touch pad device having four transceivers placing inside the four edges of the touch pad area.” Id. at 33 (citing Ex. 1010 ¶ 69). This…

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

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

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Apple Inc. v. Varia Holdings LLCAll claims unpatentable
  PTAB · Feb 27, 2026 · IPR2024-01364 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–39 are unpatentable under § 103 over Willgert and Mooney; claims 3–9, 15–19, 22–28, and 34–38 are also unpatentable over Willgert, Mooney, Holloway, and Pitroda.

  In the decision

  …the ’984 prosecution and disclosed “using a Bluetooth-equipped headset to transmit voice data to a telephone terminal,” was distinguished as not teaching the required “output voice call signals” limitations of the claims. Id. at 18 (citing Ex. 1002, 38–39, 65–70). Based on this, Patent Owner…

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Based on a review of the record, we adopt Patent Owner’s proposed level of ordinary skill in the art, with its inclusion of a Computer Science background, because it is consistent with the evidence of record, including the asserted prior art and ‘984 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our Decision would not be altered if Petitioner’s definition applied.” slip op. at 10

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

    “d) Analysis Re Construing “Voice Call Signals” We conclude that it is unnecessary to define “voice call signal.” Patent Owner’s construction would read into the term additional limitations that are for the most part already set forth in the claims: “a switchable mobile communications device capable of . . . voice call communication” (claims 1, 13, 21, 32); “output . . . a voice call signal for transmission . . . over a wireless network” (claims 13, 21, 32); “wherein the mobile communication device is a selected one of a wireless mobile phone and a personal digital assistant equipped with communication capability” (claims 12, 20, 31, 39). Thus the claims require a mobile communications device that is capable of communicating a voice call signal, but do not restrict the voice call signal to only be communicated by a mobile communications device. Likewise, claims 13, 21, and 32 (but not claim 1) require the voice call signal to be transmitted over a wireless network, but do not restrict transmission to only a wireless network, and do not restrict the wireless network to “a network of a wireless network service provider,” as Patent Owner would require.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “construction for the RFID transponder signal or data terms — it is sufficient for purposes here to conclude that the claims encompass Petitioner’s “functional emulation” articulation. See Reply 11–12. That is, the purpose of the frequent references to “emulated,” “emulation,” or the like in the ‘984 patent is to emphasize the fact that the mobile communications device of the claims has a dual role: to provide voice call communications, and to transmit RFID transponder data. In the latter role, transmitted RFID transponder data appears to an RFID reader to have been transmitted from an ordinary RFID transponder. But there is no need to rewrite the claims to restore the emulation terms, given that, as we discuss further below, Patent Owner deliberately removed those terms during prosecution. The functional emulation implicit in the ‘984 specification and claims” slip op. at 22

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

    “the fact that Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 12–14 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 15–16 (citing Ex. 1004 ¶¶ 8, 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not specifically address the issue of motivation to combine Willgert and Mooney. See generally PO Resp. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Willgert and Mooney as proffered by Petitioner with a reasonable expectation of success.” slip op. at 31

  Patent outcomesUS 8,127,984 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,127,984
• Apple Inc. v. Varia Holdings LLCAll claims unpatentable
  PTAB · Feb 27, 2026 · IPR2024-01363 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–32 are unpatentable under § 103 over Willgert and Mooney, or Willgert, Mooney, Holloway, and Pitroda, as applicable.

  In the decision

  …the ’984 prosecution and disclosed “using a Bluetooth-equipped headset to transmit voice data to a telephone terminal,” was distinguished as not teaching the required “output voice call signals” limitations of the claims. Id. at 20 (citing Ex. 1008, 38–39, 65–70). Based on this, Patent Owner…

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner “disputes the narrow range of educational experiences in the Petition’s POSITA definition, but does not otherwise dispute the remaining portion of the definition.” PO Resp. 13. Patent Owner contends that person of ordinary skill in the art: [W]ould have been someone “with at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a related field, with a background in radio frequency communications and software development, as well as approximately two years of experience working with or researching radio frequency communication systems. Lack of work experience can be remedied by additional education, and vice versa.” PO Resp. 13–14 (citing Ex. 2004 ¶ 34).7 Based on a review of the record, we adopt Patent Owner’s proposed level of ordinary skill in the art, with its inclusion of a Computer Science background, because it is consistent with the evidence of record, including the asserted prior art and ’947 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our Decision would not be altered if Petitioner’s definition applied.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “d) Analysis Re Construing “Voice Call Signals” We conclude that it is unnecessary to define “voice call signal.” Patent Owner’s construction would read into the term additional limitations that are for the most part already set forth in the claims: “the voice call signal is output over a wireless network” (claims 1 ); “outputting the voice call signal over a wireless network” (claim 9); “output a voice call signal for transmission over a wireless network” (claim 16); transmit voice call signals . . . over a wireless network” (claim 26); “wherein the mobile communication device is one of a wireless mobile phone and a personal digital assistant equipped with communication capability” (claims 8, 15, 25, 32). Thus the claims require the voice call signal to be transmitted over a wireless network, but do not restrict transmission to only a wireless network, and do not restrict the wireless network to “a network of a wireless network service provider,” as Patent Owner would require. We also agree that there is nothing in the ’984 prosecution history that supports Patent Owner’s assertion that the Examiner found that the Bluetooth signal of Cooper was not a voice call signal. Cooper was distinguished because: The term “transceiver,” however, is well understood by those of ordinary skill in the art. One of ordinary skill in the art would not reasonably interpret a “transceiver” so broadly as to incorporate an entire mobile device’s circuitry, and in particular to be read on by two separate transmitters, as Cooper teaches. Ex. 1008, 40. On the other hand, we agree with Patent Owner that Petitioner’s” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner

    “This functional emulation solution is served regardless of how the specific RFID transceiver is implemented — the ’947 specification specifically provides for both software and hardware implementations. Id. at 2:24–28 (“Embodiments of the present invention includes . . . certain hardware and/or software embodied therein for the practice of the emulated RFID method”), 3:35–36 (“mobile communication device 102 is equipped with hardware and/or software elements”), 3:52–54 (“substantial portions of the hardware and/or software elements employed to provide a RFID”), 5:16 (“A Hardware/Software Implementation”). There is no reason why one version of the hardware used to emulate the RFID function could not be RFID transponder circuitry. The issue is not whether an RFID transponder can emulate itself, but rather whether RFID transponder circuitry incorporated into a mobile communications device can be used to allow the mobile communications device to emulate a separate RFID transponder. For example, rather than requiring the person described in the Background of the ’947 patent to carry both a mobile phone and a “key with remote control for gaining access to his/her vehicle,” they need only carry the mobile communications device of the claims. The statement in the ’947 patent that “the present invention is related to an emulated radio frequency data input method” (Ex. 1001, 1:22–24), and the other references to emulation, are consistent with a conclusion that the claims encompass the “functional emulation” option as described above. However, there is no basis for adding the negative limitation proposed by Patent Owner (“without the use of a physical RFID transponder”). Omega Engineering, 334 F.3d at 1333 (rejecting a construction because “neither the plain text of the claims, the specification, nor the file wrapper justifies the imposition of this negative limitation”). See also BillJCo, LLC v. Apple Inc., No. 2023-2189, 2023-2190, 2025 WL 1417957, at *1 (Fed. Cir. May 16, 2025): Our court has “identified claim constructions that exclude a particular element as including a ‘negative limitation’ and held that such exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Ethicon LLC v. Intuitive Surgical, Inc., 847 F. App’x 901, 907 (Fed. Cir. 2021). Moreover, the prosecution history of the ’984 grandfather patent is not” slip op. at 22

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

    “Petitioner argues that this combination would have been motivated by the fact that Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user- friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 16–18 (citing Ex. 1004 ¶¶ 8, 30, 32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 48; Ex. 1021; Ex. 1003 ¶¶ 62–65). Petitioner further argues that Bluetooth headsets were a well-known concept and widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 19–21 (citing Ex. 1004 ¶¶ 8, 10, 30; Ex. 1005, ¶ 8; Ex. 1016; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 66–68). Patent Owner does not specifically address the issue of motivation to combine Willgert and Mooney. See generally PO Resp. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Willgert and Mooney as proffered by Petitioner with a reasonable expectation of success.” slip op. at 29

  Patent outcomesUS 9,405,947 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,405,947

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.