• Alliance Laundry Systems, LLC v. Payrange LLCSome claims unpatentable
  PTAB · Aug 19, 2026 · PGR2025-00027 · APJ George R Hoskins · PGR · Final written decision

  Claims 1–6 and 8–20 are unpatentable under § 101; claim 7 was not shown unpatentable.

  RulingsFinal written decision

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

    “Pet.”) pursuant to 35 U.S.C. §§ 321–329 to institute a post-grant review of U.S. Patent No. 11,966,920 B2 (Ex. 1001, “the ’920 patent”), claims 1–20. We issued an Institution Decision (Paper 12) granting the petitioned review. slip op. at 2

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining” slip op. at 11

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

    “thereby supporting our conclusion that the plain and ordinary meaning of “affordance” in claim 1 refers to an interactive user interface element.” slip op. at 30

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “For the foregoing reasons, we conclude Petitioner’s reliance on Low’s” slip op. at 21

  Patent outcomesUS 11,966,920 mixed
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · Electric Power · KSR
  Patents in suitUS 11,966,920
• Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.

  RulingsFinal written decision

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

    “arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79

  • BurdenNot shown unpatentable

    “Anticipation is not an ipsissimis verbis test, but “[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, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65

  Patent outcomesUS 9,171,268 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,171,268
• Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–3 and 9 are unpatentable as obvious over Chen; claims 4–8 and 10 were not shown unpatentable on the instituted grounds.

  RulingsFinal written decision

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

    “Response. Paper 10 (“Prelim. Resp.”). We instituted an inter partes review on all challenged claims on all grounds set forth in the Petition. Paper 11 (“Institution Decision” or “Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art.” slip op. at 10

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

    “Petitioner proposes a construction for the term “code rate.” Separately, with regard to means-plus-function limitations recited in claims 5, 9, and 10, Petitioner provides claim construction contentions that identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function, as required by 37 C.F.R. § 42.104(b)(3). Pet. 33–37. Patent Owner does not propose a definition for any claim term nor does it contest any of Petitioner’s proposed constructions. PO Resp. 7–9. In the Institution Decision, we preliminarily construed the means- plus-function claim limitations as set forth in the table below, but determined that it was not necessary for us to construe the claim term “code rate.” Inst. Dec. 11–20 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)).5 Based on the 5 Petitioner notes that “construction may be helpful to establishing the inverse and counterintuitive relationship between code rate and redundancy in which an increased code rate (e.g., 1/2) means that fewer redundant bits are transmitted whereas a decreased code rate (e.g., 1/4) means that more determination that we need not expressly construe “code rate” and our preliminary determinations for the means-plus-functions terms for the reasons set forth in our Institution Decision, which we adopt and do not repeat herein, and which are reflected in the table below. Id. at 11–19. Because Petitioner presents further argument for its construction of “means for detecting” in its Petitioner’s Reply––we address that argument below for completeness.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for patent owner

    “We recognize, however, “the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification.” Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950–53 (Fed. Cir. 2007). “The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure.” Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing AllVoice Computing PLC v. Nuance Commc'ns., required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The specification must “disclose an algorithm for performing the claimed function.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008); Aristocrat, 521 F.3d at 1333. The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.Cir.2008) (internal citation omitted)). “Simply disclosing software, however, ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Id. (citing Finisar, 523 F.3d at 1340–41 (citation omitted)). In the present proceeding, even assuming, arguendo, that the record sufficiently supports a finding that a POSITA would have known of FEC, CRC, ARQ, and hybrid ARQ protocols, Petitioner has not shown that the specification of the ’561 patent discloses a sufficient algorithm, whether “as a mathematical formula, in prose, or as a flow chart, or any other manner that provides sufficient structure” for the “means for detecting,” including an algorithm for performing any one or more of these protocols. Noah, 675 F.3d at 1312. The ’561 patent discloses “means (224) for detecting a need for retransmission of the received coded data block,” “CCU [Channel Coding Unit] [that] is responsible for channel coding, including forward error coding FEC” as well as detecting the “[t]he need for retransmission . . . by an error errors occurring on the channel with sufficient certainty.” Ex. 1001, code (57), 2:25, 6:64–65, 7:54–59; see id. at Fig. 5, Step 508, 10:41–44. Petitioner has not shown that the ’561 patent presents an algorithm for how the error detection code detects an error, nor explained the circumstances under which the error correcting code cannot correct errors and what constitutes “sufficient certainty.” Id. at 7:54–59. Although the ’561 patent discloses examples of incremental redundancy protocols such as “hybrid FEC/ARQ (Forward Error Correction/Automatic Repeat Request), which uses error correction coding in order to decrease the number of retransmissions,” it does not present an algorithm for implementing the same. Id. at 2:33–37. For the foregoing reasons and based on the entirety of the record developed during trial, we conclude that Petitioner fails to identify sufficient algorithmic structure corresponding to the “means for detecting” recited in independent claims 5 and 10.” slip op. at 15

  Patent outcomesUS 6,529,561 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,529,561
• Target Corporation v. Proxicom Wireless, LLCSome claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00931 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, and 52–55 are unpatentable over Perttila alone or Perttila and Insolia; claims 37 and 43 were not shown unpatentable.

  RulingsFinal written decision

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

    “We instituted trial based on all asserted claims and grounds of unpatentability as follows: Claims Challenged 35 U.S.C. § Reference(s) 1–5, 14–18, 27, 31, 36, 37, 42, 43, 102(b)3 Perttila 48, 52, 55 1–5, 14–18, 27, 31, 36, 37, 42, 43, 103(a) Perttila 48, 49, 52, 55 27, 31, 53, 54” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9

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

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term. 2. “wireless device” Patent Owner argues that, as recited in the challenged claims, “wireless device” “refer[s] to wireless communication capabilities, not that a wireless device would be precluded from having any external wires whatsoever.” PO Resp. 19. However, Patent Owner concedes that construction of “wireless device” is “not necessary to resolve the dispute here.” Id. Petitioner argues that “‘wireless device’ should be construed to require a device without external wires,” noting that the claims of the ’359 patent recite a “wireless device” rather than a “wireless communication device.” Pet. Reply 5–6. However, Petitioner also concedes that “no construction of this term is necessary.” Id. at 5. No construction of this term is necessary. The parties both agree that no construction is needed, and as explained below our decision does not depend on a construction of this term.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “As noted above, Petitioner maps Perttila’s disclosure of “electronic coupon information including various offerings” to the recited “list of goods” and notes that the merchant-media device can be located in a store where the advertised goods are sold. Pet. 51–52 (citing Ex. 1006 ¶¶ 26, 39); see also Ex. 1003 ¶ 177. However, neither Petitioner nor its declarant identifies adequately any “list of goods” that Perttila’s remote server delivers to the first wireless device. At best, Petitioner and its declarant describe an iterative process whereby a user interacts with a plurality of tags or beacons in a store to receive multiple electronic coupons. Pet. Reply 17–18; Ex. 1003 ¶ 177. However, Petitioner fails to explain adequately how delivering coupons one at a time in an iterative process constitutes delivering a list of goods as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a restaurant menu. Pet. 52–53 (citing Ex. 1006 ¶¶ 26); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending a restaurant menu constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that, in embodiments, the billboard may promote a food product and the user’s interaction with the billboard results in the server sending “a restaurant menu or a recipe involving that particular food or food type.” Ex. 1006 ¶ 26. However, neither Petitioner nor its declarant explain adequately how this constitutes a step in a process for an electronic commerce transaction. Notably, Petitioner and its declarant fail to identify any discussion or suggestion in Perttila of the user interacting with the menu after it has been delivered. Nor do we see any such disclosure in Perttila. Rather, Perttila merely discloses sending a restaurant menu as part of “electronic coupon information”: “In another application, the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for example, a restaurant menu or a recipe involving that particular food or food type.” Id. Moreover, we note that Petitioner does not propose to modify Perttila’s system in some manner such that a user could interact with the delivered menu as part of an electronic commerce transaction. Petitioner also refers to Perttila’s disclosure of delivering a movie ticket. Pet. 52–53 (citing Ex. 1006 ¶¶ 44–50); see also Ex. 1003 ¶ 177. However, Petitioner and its declarant again fail to explain adequately how sending an electronic movie ticket constitutes delivering a list of goods as a step in a process for an electronic commerce transaction. Perttila discloses that its system may be used to purchase a movie ticket that is redeemed “at a time much later than the time when the electronic coupon is received.” Ex. 1006 ¶ 44. Perttila discloses purchasing the movie ticket and later using a menu displayed on the user’s mobile phone to activate and validate the ticket at the theater. E.g., id. ¶¶ 46–50. Petitioner fails to explain persuasively how delivering an electronic movie ticket in the manner disclosed by Perttila constitutes delivering a list of goods as a step in a process for an electronic commerce transaction.” slip op. at 38

  Patent outcomesUS 8,090,359 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,090,359
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Feb 6, 2020 · IPR2018-01033 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 17 is anticipated by Bednar, and claims 1 and 17 are obvious over Bednar and Gunther; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

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

    “requesting institution of inter partes review of claims 1, 4–6, and 17–19 of U.S. Patent No. 8,004,922 B2 (Ex. 1001, “the ’922 patent”). VLSI Technology LLC (“Patent Owner”) filed a Preliminary Response (Paper 12). Applying the standard set forth in 35 U.S.C. § 314(a), we instituted an inter partes review of all challenged claims. Paper 17 (“Inst. Dec.”).” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “to the level of ordinary skill in the art was incorrect. Accordingly, because our preliminary finding is consistent with the level of ordinary skill in the art reflected by the prior art of record, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “at least (1) an undergraduate degree in electrical engineering (or an equivalent subject), together with three years of post-graduate experience designing power management circuits; or (2) a master’s degree in electrical engineering (or equivalent subject) together with two years of post-graduate experience designing power management circuits.” Inst. Dec. 8–9; see Pet. 36 (citing Ex. 1002 ¶¶ 26–27).” slip op. at 9

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

    “construction of “memory device,” specifically whether it encompasses a latch. Neither party argues that “memory device” is expressly defined in the ’922 patent. Accordingly, the plain and ordinary meaning of the term controls. And, the standard under which we construe the term is the broadest reasonable construction in light of the specification.” slip op. at 45

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “preponderance of the evidence, that (1) claim 17 is anticipated by Bednar, and (2) claims 1 and 17 would have been obvious over the combination of Bednar and Gunther. For the reasons discussed above, Petitioner has not demonstrated, by a preponderance of the evidence, that (1) claim 1 is anticipated by Bednar or (2) claims 4–6, 18, and 19 would have been obvious over the combination of Bednar, Gunther, and Willingham. The chart below summarizes our conclusions.” slip op. at 91

  Patent outcomesUS 8,004,922 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,004,922
• Hoya Optical Labs Of America, Inc. v. Inland Diamond Products Co.Some claims unpatentable
  PTAB · May 23, 2019 · IPR2018-00178 · APJ Michael G Mcmanus · IPR · Final written decision

  Claims 1, 3, 7, 8, and 12 are unpatentable as obvious; claims 2, 4–6, and 9–11 were not proven unpatentable.

  RulingsFinal written decision

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

    “The claims at issue are apparatus claims rather than process claims. Accordingly, no specific means of achieving the interference fit is required. We construe “interference fit” as a structural limitation specifying the relationship of the bevel and frame. Even if construed as a product-by-process limitation (with the process being the insertion of a lens within a frame of lesser size), “determination of patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Patent Owner frames its proposed construction in terms of the process by which the fit comes about, but says little about the structural characteristics of the interference fit upon assembly. The Specification teaches that pressure upon the lens would lead to compression of the vertex. Ex. 1001, 4:40–55. That the vertex is in a compressed state is separately required in all claims by the “in compression” limitation. Id. at 8:54, 9:24. In view of the foregoing and in light of the parties’ arguments following institution, we modify our preliminary construction to recognize that an interference fit in this context implicates associated compressive forces. We, therefore, construe “interference fit” to mean “a relationship of the bevel of the lens and the receiving channel bottom of the eyeglass frame where such parts are in contact so as to exert frictional and compressive forces that secure the lens in place.”” slip op. at 17

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

    “Petitioner sets forth a rationale to combine the teachings of Gottschald and Schaeffer. Id. at 20. Petitioner argues that the teachings of Gottschald are applicable to the prescription lenses of Schaeffer as follows: POSITA would have been motivated by these teachings to use the method and device of Gottschald, with no change in its function, to edge the prescription plastic lens blank described by Schaeffer “so that the spectacle lens edge machining directly delivers a spectacle lens which is suitable for the selected spectacle frame, which has been ground to shape and which is provided with a bevel” (Gottschald, p. 6), and thereby to obtain the expected result of a “prescription plastic lens for use in an eyeglass frame” as recited in claim 1. Id. at 20. Patent Owner does not challenge the adequacy of Petitioner’s rationale with specificity. See PO Resp. 48–54. Rather, Patent Owner argues that Petitioner relies on “mere conclusory statements” throughout the Petition. Id. at 49. Such a generalized argument has little force. Having reviewed the evidence as a whole, we find that a person of ordinary skill in the art would have had reason to combine the teachings of Gottschald (regarding lens edging) and Schaeffer (regarding prescription lenses) in the manner Petitioner proposes.” slip op. at 28

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

  Patent outcomesUS 8,636,360 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 8,636,360
• Tomtom, Inc. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 11, 2019 · IPR2017-02023 · APJ Debra K Stephens · IPR · Final written decision

  Claims 1–5 are unpatentable over Jimenez, Levi, and ordinary-skill knowledge; claims 6–8 were not shown unpatentable because Jimenez did not teach the claimed transmitter.

  RulingsFinal written decision

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

    “We find the ’212 Patent is directed to data for a particular user (see, e.g., ’212 Patent, Abstract). This conclusion is supported by the Specification. Indeed, all discussion in the ’212 patent is directed to a pedometer for use by and relying on data obtained from an individual user. Thus, the Specification suggests that the term “calibration” should be construed as a process that correlates a user’s stride rate and stride length. The Oral hearing confirms this conclusion. In the Oral Hearing, Petitioner’s counsel, Mr. Doshi, responded to a request to identify the calibration and the plurality of calibrations as follows: JUDGE STEPHENS: So what are you pointing at in the 212 patent as being [a] calibration and the plurality of calibrations? MR. DOSHI: That’s in column 5. So at column 5 it says that after a proper warm up the user completes a sample run or walk on the track at normal pace, et cetera, et cetera. So it's saying that here’s S1 and following completion of the first run, so here it’s saying you’re doing different walks at different speeds . . .where you're having the user walk at different walking speeds and measuring their step size as you do that (Trans. 21:1–10; see also Tr. 19:4–7) JUDGE ZADO: Okay. And then so taking that further then, I understand your argument to be that in the 212 patent the runner for the first sample S1 will run at one pace and that’s, according to Petitioner, that's one calibration and then the runner will run at a second pace for the S2 sample and that’s the second calibration, and then the runner will run at a third pace and then that's the S3 sample and then that's a third calibration? Is that Petitioner's argument? MR. DOSHI: Yes 13 (Tr. 22:4–11). Therefore, based on Petitioner’s statements at the Oral Hearing, the term “calibration” should be construed as the process of taking a sample that correlates step rate and step length for an individual.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.), 18 despite Patent Owner’s declarant, Dr. Caloyannides, opining that the level of ordinary skill would not be so limited as proposed by Mr. Blackadar: I note that although the qualifications Mr. Blackadar describes would qualify one as a PHOSITA in this case, I do not believe the definition of a PHOSITA here would be so limited. The technology of the ‘212 Patent implicates other fields, such as Sports Medicine, Exercise Science, and Physiology. I believe that a bachelor’s degree in one of these fields, or a similar field, with at least two years of practical experience working with pedometers and/or health or fitness trackers or sensors, or an advanced degree in one of these areas, could qualify one as a PHOSITA in this case (Ex. 2001 ¶ 26). Petitioner argues that Patent Owner’s definition of a person of ordinary skill in the art would mean a “[person having ordinary skill in the art] under Patent Owner’s definition would be more well-informed than Patent Owner’s own expert” (Pet. Reply. 2); however, we do not read Patent Owner’s assertion or Dr. Caloyannides’ testimony as suggested by Petitioner. Rather, we read Dr. Caloyannides’ testimony as expanding the fields of expertise. We do not observe a meaningful difference 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, 261 F.3d at 1355). Our analysis in this Decision is supported by either assessment. Based on our review of the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Mr. Blackadar and Dr. Caloyannides, we adopt and” slip op. at 18

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). Here, Petitioner has persuaded us that Levi is from the same field of endeavor as the ’212 Patent –– pedometers that count the number of steps taken to calculate distance traveled (see Pet. 20). Specifically, although Levi adds a navigation feature, Levi is directed to a pedometer that, in pertinent part, adjusts step size according to step frequency in order to estimate distance traveled by a user (Levi, 6:6–43). Levi states “[t]he present invention for a ground speed/distance sensor is an improvement over a common hiker’s pedometer” and “[t]he present invention analyzes the frequency of a user’s footsteps to aid in the detection of future footsteps, and further to aid in determining the size of footsteps taken by the user” (Levi, Abstract, 2:57–60, 2:65–67). Similarly, the ’212 Patent is directed to a pedometer and specifically, a pedometer that calculates actual stride lengths of a user based on relative stride rates (’212 Patent, Abstract). Thus, both the ’212 Patent and Levi are from the same field of endeavor –– pedometers or devices that include or rely on pedometers. Furthermore, both Levi and the ’212 Patent are pertinent to the particular problem with which the inventor is involved –– accurate distance identification. 44 Patent Owner additionally argues “[t]he different problems addressed” slip op. at 44

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

    “A holding of obviousness can be based on a showing that “there was an apparent reason to combine the known elements in the fashion claimed” (KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Such a showing requires some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. (id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted)). As admitted by Patent Owner, an ordinarily skilled artisan would have known a user’s stride length could vary with stride rate at the time of invention (see PO Resp. 52). As noted by Petitioner, Levi discloses using a dynamic step size algorithm that “improve[s] the accuracy of distance 49 measurements of a human footstep sensor” (Pet. Reply 25 (citing Levi, 6:17–21)). We further credit Mr. Blackadar’s testimony that an ordinarily skilled artisan would have been motivated to improve Jimenez using Levi’s dynamic step size algorithm, to improve the calculated distances (Ex. 1005 ¶¶ 92). Indeed, we find that an ordinarily skilled artisan would have been motivated to combine the teachings of Jimenez and Levi to “monitor [ ] the distance traveled more accurately than prior pedometers that calculated distance based on average stride length” (Pet. 31 (citing Ex. 1005 ¶ 90), 32 (citing Ex. 1005 ¶ 92)). In particular, we find that, given it was known a user’s stride length could vary with stride rate, as admitted by Patent Owner (PO Resp. 52), an ordinarily skilled artisan would have been motivated to implement a data processor that accounted for this relationship, such as that described in Levi (Pet. 32–33 (citing Ex. 1005 ¶¶ 93–94)).” slip op. at 49

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212
• Alarm.Com Inc. v. Vivint, Inc.Some claims unpatentable
  PTAB · May 10, 2017 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 9, 10, 14, and 27 are unpatentable as obvious; claims 17, 18, 22, 25, 26, and 28 were not shown unpatentable because the cited combination did not teach the claimed normal status message.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “patent “would have had at least a bachelor’s degree in computer science, electrical engineering, or computer engineering (or equivalent experience) and at least two years of experience in supervisory and control systems.” Pet. 8. Alarm.com’s declarant, Mr. Zatarain, assumes this skill level assessment in his declaration and opines that he was a person of ordinary skill, under this assessment, at the time of the invention. Ex. 1107 ¶ 11. Vivint does not dispute Alarm.com’s assessment in its Response, but we note that Vivint’s declarant, Mr. Denning, opines that a person of ordinary skill in the art of the ’654 patent would have had “at least a bachelor’s degree in electrical engineering or computer science and at least four years of experience in remote monitoring and control systems,” with the possibility of less experience being compensated for by more education. Ex. 2010 ¶ 15. We do not discern a material difference between the assessments advanced by the declarants, nor does either party premise its arguments exclusively on its assessment of the level of skill in the art. Moreover, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1107 ¶¶ 2–4, Attachment A; Ex. 2011), and either assessment of the level of skill in the art is consistent with the ’654 patent and the asserted prior art. We adopt Mr. Zatarain’s assessment and apply it to our obviousness evaluation below, but note that our conclusions would be the same under Mr. Denning’s assessment.” slip op. at 18

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

    “skill in the art would have had sufficient reason to combine the teachings of Levac with Shetty and Garton, we note that the Supreme Court has held that an obviousness evaluation “cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR, 550 U.S. at 419. Instead, the relevant inquiry is whether Alarm.com has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. When describing examples of what may constitute a sufficient rationale to combine, the Supreme Court elaborated that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. After considering the record in its entirety, we are persuaded that Alarm.com’s rationale for combining the teachings of Shetty, Levac, and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness. When, as here, a technique has been used to improve one device (i.e., Levac’s messaging system creates an .msa file that may incorporate a particular message and a list of destination parameters, such as a recipient site location, required for transmitting a message to a particular destination), and one of ordinary skill in the art would have recognized that it would improve similar devices in the same way (i.e., using the aforementioned disclosure in Levac to improve Shetty’s system), using the technique is obvious unless its actual application is beyond the skill level of an ordinarily skilled artisan. See KSR, 550 U.S. at 417; Pet. 31–33; Ex. 1107 ¶¶ 125–128; see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (Our reviewing court has recognized “[t]he normal desire of artisans to improve upon what is already generally known.”). Apart from generally asserting that neither Alarm.com nor Mr. Zatarain provides the “what,” “how,” and “why” for the asserted combination of Shetty and Levac (see PO Resp. 51–52), Vivint does not present credible evidence that combining the teachings of these references in the manner proposed by Alarm.com would have been uniquely challenging or otherwise beyond the skill level of an ordinarily skilled artisan.” slip op. at 49

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

    “Mintz to support its argument that Alarm.com must look to the problem solved by the ’654 patent in its obviousness evaluation, we do not agree. In KSR, the Supreme Court made clear that it is error to “hold[] that courts and [petitioners] should look only to the problem the patentee was trying to solve.” KSR, 550 U.S. at 420. The Supreme Court explained that [t]he question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. Here, as we explain above, Alarm.com provides sufficient reasoning as to why one of ordinary skill in the art would have understood that Shetty allows a user to remotely access user profile database 106 via user interface 110 to configure profiles stored therein. See Pet. 21–23; Pet. Reply 14–16. Alarm.com’s reasoning in this regard is directed specifically to the subject matter at issue in independent claims 9 and 27, and Alarm.com provides sufficient evidence in the record to support its reasoning. As a result, instead of presenting reasoning that is based on impermissible hindsight reconstruction, as asserted by Vivint, Alarm.com has articulated sufficient reasoning as to why one of ordinary skill in the art would have had reason to extend Shetty’s teaching of user access to user profile database 106 via user interface 110 to provide for remote configuration of the profiles stored therein.” slip op. at 42

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

    “Alarm.com’s explanations and supporting evidence as to how the combination of Shetty and Garton teaches or suggests the remaining limitations recited in independent claims 9 and 27, nor does Vivint address the reasons provided by Alarm.com as to how or why a person of ordinary skill in the art would have combined the teachings of Shetty and Garton. See generally PO Resp. 14–42. We have reviewed Alarm.com’s explanations and supporting evidence in this regard, and we are persuaded that the combination of Shetty and Garton teaches or suggests each such limitation (see Pet. 17–23, 29–31, 33–37, 40–41, and evidence cited therein), as well as that Alarm.com’s rationale for combining the teachings of Shetty and Garton suffices as articulated reasoning with rational underpinnings to support the legal conclusion of obviousness (id. at 31–33; Ex. 1007 ¶ 128). (4) Conclusion We conclude that Alarm.com has demonstrated by a preponderance of the evidence that the subject matter of independent claims 9 and 27 would have been obvious over the combined teachings of Shetty.” slip op. at 45

  Patent outcomesUS 6,462,654 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,462,654
• Symantec Corp. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentable
  PTAB · Mar 15, 2017 · IPR2015-01892 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1, 2, and 6 are unpatentable over Swimmer under § 103; claims 5, 10, 11, 14, and 15 were not shown unpatentable.

  RulingsFinal written decision

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

    “consideration of the Preliminary Response (Paper 7) of Patent Owner, Finjan, Inc., we instituted a trial pursuant to 35 U.S.C. § 314(a) with respect to claims 1, 2, 5, 6, 10, 11, 14, and 15 and subsequently joined Case IPR2016-00890 with the instant case. Paper 9 (“Decision on Institution” or “Dec. on Inst.”); see also Paper 30 (copy of decision instituting inter partes review in Case IPR2016-00890 and granting motion for joinder; also filed as IPR2016-00890, Paper 8).” slip op. at 2

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “1 Case IPR2016-00890 has been joined with the instant proceeding.” slip op. at 1

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We determine that the differences in the declarants’ assertions are negligible and that both assessments are consistent with the ’494 patent and the referenced prior art. For the purposes of the analysis below, we adopt Dr. Medvidovic’s assessment.” slip op. at 22

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “As explained in Section III.B.4.a.i, supra, we are persuaded by Dr. Hall-Ellis’s testimony that Swimmer was publicly available at least as early as December 1995 and is, accordingly, prior art at least under 35 U.S.C. § 102(a),6 as well as that Exhibit 1005 represents an authentic 6 As further mentioned in Section II.B, supra, we determined in our Decision on Institution in Case IPR2016-00159 that the ’494 patent is not entitled to any earlier priority date than the November 6, 1997, filing date of the ’388 application, based on the record then before us in that case. See IPR2016- 00159, slip op. at 10–13 (PTAB May 13, 2016) (Paper 8). Because that date is more than one year after December 31, 1995, Swimmer would also be prior art under 35 U.S.C. § 102(b) based on the December 1995 publication date. copy of Swimmer and Exhibit 1010 represents an authentic copy of the Virus Bulletin Proceedings within the meaning of Federal Rule of Evidence 901. Further, Federal Rule of Evidence 401 provides that evidence is relevant if “it has any tendency to make a fact more or less probable than it would be without the evidence” and “the fact is of consequence in determining the action.” Both the Federal Circuit and the Board have recognized that there is a “low threshold for relevancy.” See, e.g., OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1407 (Fed. Cir. 1997); Laird Techs., Inc. v. GrafTech Int’l Holdings, Inc., Case IPR2014-00025, slip op. at 44 (PTAB Mar. 25, 2015) (Paper 45). There is no question on this record that Swimmer is relevant to the patentability of the challenged claims in this case. Accordingly, we deny Patent Owner’s Motion to Exclude as to Exhibits 1005 and 1010.” slip op. at 62

  Patent outcomesUS 8,677,494 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,677,494
• Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentable
  PTAB · Jun 21, 2016 · IPR2015-00159 · APJ Kerry Begley · IPR · Final written decision

  Claims 1–3, 8, and 15–25 are unpatentable: Pong anticipates claims 1–3, 8, 15, 16, and 25, and Pong and Smith render claims 17–24 obvious; claim 11 was not shown unpatentable.

  RulingsFinal written decision

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

    “Electronics Co. Ltd., Samsung Electronics America, Inc.,2 and Amazon.com, Inc. (collectively, “Initial Petitioners”) filed a Petition requesting inter partes review of claims 1–3, 8, and 11–25 of U.S. Patent No. 7,296,121 B2 (Ex. 1001, “the ’121 patent”). Pet. Pursuant to 35 U.S.C. § 314(a), we determined the Petition showed a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of claims 1–3, 8, 11, and 15–25, and instituted an inter partes review of these claims. Paper 12 (“Inst. Dec.”). We, however, did not institute review of claims 12–14, because we determined the Petition did not show a reasonable likelihood that Petitioner would prevail with respect to these claims. Id. at 23–30.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Dr. Horst’s testimony that as a result, from the perspective of the presence bit vector, “every processor indicated as storing a copy of the memory line in its cache is storing a valid copy.” Ex. 1014 ¶ A-11; see Pet. 26–27. In other words, as Dr. Horst testifies, “because a write update protocol always updates caches to keep them valid,” “when a cache line is present[,] it is necessarily valid.” Ex. 1025 ¶ 23; see Reply 17–18. Indeed, Dr. Oklobdzija agrees that because the write update protocol “force[s the caches] to update their value for a cache line every time it changes”—as Pong discloses— “every processor that has the cache line will have the line in a valid state.” Ex. 2016 ¶ 90 (emphasis added); Ex. 1003 ¶ 48; see also Tr. 115:1–23 (Patent Owner conceding that in a write update protocol, any cached copies could be “considered . . . to be valid” because they are “kept usable” and “updated”). Accordingly, based on Pong’s disclosures, as well as the explanatory testimony of Dr. Horst in addition to Dr. Oklobdzija, we determine that in the write update protocol, a set bit in Pong’s presence bit vector represents that the corresponding cached copy is present and valid.” slip op. at 44

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

    “2. OBVIOUSNESS OVER PONG AND SMITH We turn to the instituted obviousness ground alleging that claims 17–” slip op. at 73

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “addresses Koster—a prior art U.S. patent of record as Exhibit 1009 that was filed on July 13, 2004 and issued on April 13, 2004—Patent Owner’s failure to demonstrate enablement of the proposed substitute claims results in a failure to demonstrate novelty and non-obviousness of the proposed substitute claims over the prior art of record. When arguing how the limitations of the proposed substitute claims distinguish them from the disclosures of the references of record, Patent Owner’s Motion addresses Koster only by asserting that “[a]s to . . . Koster . . . , because, as discussed above, all of the substitute claims find support in the [’]347 Application, . . . Koster . . . is not prior art to any of the proposed substitute claims.” Mot. 22. Because Patent Owner does not persuade us that the proposed substitute claims are enabled by the disclosure in the ’347 Application, we find unpersuasive Patent Owner’s suggestion that the proposed substitute claims are entitled to the filing date of the ’347 Application. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (“For a patent to claim priority from the filing date of its provisional application, . . . the specification of the provisional must . . . enable an ordinarily skilled artisan to practice the invention claimed in the non-provisional application.”) (internal citation and quotations omitted); Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998) (“The earlier application must contain a written description of the subject matter of the interference count, and must meet the enablement requirement.”); see also Novo Nordisk Pharm., Inc. v. Bio-Tech. Gen. Corp., 424 F.3d 1347, 1359 (Fed. Cir. 2005) (“[If] the 1983 PCT application was . . . not enabled, Novo would not be able to rely upon the application’s priority date to overcome the Brewer patent.”). Accordingly, we also find unpersuasive Patent Owner’s assertion basis for asserting that the proposed substitute claims are patentable over Koster (by itself or in combination with other references of record), we conclude that Patent Owner has not met its burden of demonstrating patentability of the proposed substitute claims over the references of record. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1307 (Fed. Cir. 2015) (upholding Board’s requirement that patent owner “show patentable distinction [of the substitute claims] over the prior art of record”); Opp. 1–4. Thus, Patent Owner has not met its burden for proposed substitute claims 26–34.” slip op. at 84

  Patent outcomesUS 7,296,121 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121

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.