• Apple Inc. v. Memoryweb, LLCAll claims unpatentable
  PTAB · Jul 8, 2026 · PGR2022-00006 · APJ Jason M Repko · PGR · Remand

  On remand, the Board held claims 1–59 unpatentable: claims 1–6, 8–37, 40–44, and 49–59 over A3UM under §103, and claims 6, 7, 38, and 39 for lack of written description under §112.

  RulingsRemand decision

  • RemandOther

    “On remand, the Board is to determine “[w]hether the alleged inconsistency in [Petitioner’s] treatment of map images compared to other first/second versions of claim elements supports rejecting [Petitioner’s] theory on claim-construction or other merits grounds is a matter for the Board to consider in the first instance on remand, constrained by any relevantly similar now-final findings of fact and conclusions of law in the ’020 PGR and related proceedings” (CAFC Dec. 16). Thus, the two issues on remand are (1) the construction of the second map image and (2) whether A3UM teaches or suggests the claimed “second map image” under that construction.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision and Final Written Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12; FWD 30–31. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision and Final Written Decision.” slip op. at 6

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

    “c. Analysis We agree with Petitioner that the “second map image” should be construed as the map image in the second person view. Reply 5. Under Petitioner’s proposed construction, the terms “first” and “second” identify which person view that the map image is within. Id. The map image’s connection to the person view is important to how the user interacts with the interface because selecting the map image in one view does something different than selecting the map image in another, as recited in claims 14 and 46.” slip op. at 12

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

    “Here, we disagree with Patent Owner’s argument because it is based on the premise that the second map image is different from the first in a way that is not reflected in the claims. See Section II.C.3 supra. Even if “the claims consistently use the terms ‘first’ and ‘second’ to refer to separate and distinct elements,” A3UM’s first and second map images are separate and distinct elements for at least the reason they are included in separate and distinct views in the interface. See Pet. 63; Reply 5. As discussed in Section II.C.3, the second map image is the map image in the second person view. Here, Petitioner sufficiently shows that A3UM provides the same functionality for each person, including displaying the person in the Faces view with their name within A3UM’s overall user interface. See Pet. 62 (citing Ex. 1003, ¶215; Ex. 1005, 418–420). Patent Owner does not dispute this. See PO Resp.; Sur-reply. For the same reasons why A3UM teaches the “first map image” with respect to a first person view recited in claims 1 and 31, Petitioner has shown that A3UM also teaches the “second map image” in the second person view. See FWD 53–56. In sum, Patent Owner’s arguments are unpersuasive because they are based on an incorrect claim construction, and Petitioner has shown that claims 13 and 45 are unpatentable. 5. Claims 14–16 and 46–48 Apart from the arguments analyzed above, Patent Owner does not present separate arguments directed to the subject matter of claims 14–16 burden to show that the challenged claims are unpatentable. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). We have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them persuasive as they are consistent with and supported by the evidence of record. See Pet. 63–64. Thus, Petitioner has shown that claims 14–16 and 46–48 are unpatentable over A3UM.” slip op. at 14

  Patent outcomesUS 11,017,020 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 11,017,020
• Spotify USA Inc. v. Manuel TijerinoInstituted
  PTAB · Dec 17, 2025 · IPR2025-01280 · APJ St John Courtenay III · IPR · Institution

  The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claim 1 is obvious over Laut, Kincaid, and Bongiovi.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, for the reasons given below we determine the information presented in the Petition demonstrates there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’925 patent.” slip op. at 2

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

    “The Board’s Preliminary Analysis — Rationale to Combine Kincaid with Laut At this stage of the proceeding, based on the express disclosures of Kincaid and Laut, we are persuaded Petitioner’s rationale is sufficient to show that a “POSITA would seek to ensure consistent loudness across tracks to maximize customer satisfaction and would thus be motivated to combine Kincaid with Laut in order to correct these problems.” Pet. 27 (citing Ex. 1003 ¶ 65). Moreover, we credit Mr. Rosenblatt’s testimony that the “POSITA’s motivation would have been at least partially financial: improving the listeners’ experiences could increase demand for the jukebox, leading to” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that an ordinarily skilled artisan for the ’925 patent “would have had a Bachelor of Science degree and a Masters [sic] degree in Computer Science, Electrical Engineering, Computer Engineering, or an equivalent field, as well as one to two years of academic or industry experience in computer-based systems for digital audio distribution and playback, or comparable industry experience.” Pet. 3 (citing Ex. 1003 ¶ 28). Petitioner further asserts that the ordinarily skilled artisan “would have been knowledgeable about audio signal processing techniques, such as gain normalization and dynamic range compression, and software engineering.” Id. At this stage, Patent Owner does not specifically address the level of skill of the ordinary artisan. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’925 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 12

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

    “Patent Owner incorrectly interprets the issued ’925 patent claim terms under BRI. Prelim. Resp. 2. Accordingly, at this stage of the proceeding, we decline to consider Patent Owner’s proposed constructions for claim 1 under the legally incorrect broadest reasonable interpretation standard, which is only applicable during prosecution before a patent examiner. As emphasized above, in interpreting the claims of the ’925 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2023). We further emphasize that we construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on our review of the current record, we determine that no express construction of any term is necessary to resolve this case for purposes of institution. We leave it to the parties to further develop during under the proper Phillips standard applied to IPR proceedings. See Phillips, 415 F.3d at 1313.” slip op. at 14

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,146,925
• Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Instituted
  PTAB · Dec 3, 2025 · IPR2025-01026 · APJ Steven M Amundson · IPR · Institution

  The Board instituted review of claims 1–20 on all petition challenges because the Baliarda-543 challenges met the reasonable-likelihood threshold.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner filed a confidential version of the Petition as Paper 3 and a public version of the Petition as Paper 4. We cite to the public version of the Petition. institute an inter partes review of claims 1–20 in the ’677 patent on all challenges included in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts that a person of ordinary skill as of the ’677 patent’s effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 11 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 40. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 17. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’677 patent as well as the asserted references. See, e.g., Ex. 1001, 1:26–6:47, 42:47–44:61, code (57); infra §§ III.E.1–III.E.2.” slip op. at 23

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

    “4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 26

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

    “Although “Dou does not require its ‘diversity antenna architecture’ to provide spatial diversity,” Dou nevertheless requires a wireless device with some type of diversity antenna architecture. See, e.g., Ex. 1013 ¶¶ 14, 17–18, 22–24, 30, 32–34, codes (54), (57), claims 1 and 16. As an example, Dou’s independent claim 1 covering a “wireless device” requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 1. As another example, Dou’s independent claim 16 covering a “wireless device” also requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 16. As yet another example, Dou’s Abstract describes a “wireless device” including a “first diversity antenna” and a “second diversity antenna.” Id. at code (57). Petitioner does not explain how the proposed combination provides anything other than spatial diversity. See Pet. 33–35; Prelim. Reply 1–3; Ex. 1007 ¶¶ 118–124. Based on the current record, we agree with Patent Owner that with Ciais-Quadband’s antenna used for Dou’s two antennas 206 and 208, the two identical quadband antennas would have:” slip op. at 46

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,031,677
• Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Instituted
  PTAB · Dec 3, 2025 · IPR2025-01027 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR of claims 1–20 on all petition challenges, finding a reasonable likelihood that Baliarda-543 anticipates or renders obvious those claims.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2

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

    “Regarding spatial diversity, Dou explains that a first internal antenna and a second internal antenna “may be separated by a distance (D) that is no less than the quarter wavelength (>=λ/4) of the lowest frequency.” Ex. 1013 ¶ 24; see Ex. 2010 ¶¶ 35, 44. Consistent with Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency, “a commonly accepted rule of thumb is that at least a quarter-wavelength spacing between antennas is necessary to provide effective spatial diversity.” Ex. 2010 ¶¶ 33, 35, 47. Effective spatial diversity requires sufficient spacing between antennas because that technique “uses multiple antennas to improve signal reliability and performance by mitigating the effects of multipath fading and other interference.” Ex. 2010 ¶ 33. “Multipath fading occurs when a wireless signal propagates along multiple different paths of differing lengths because of interactions with obstacles, resulting in portions of the signal energy arriving at a receiver with different phases slightly offset in time.” Id. Locations insufficiently separated in terms of wavelength “tend to experience similar fading and interference characteristics.” Id. Thus, closely spaced antennas “cannot provide effective spatial diversity.” Id. By providing sufficient spacing between antennas, however, “the likelihood increases that at least one of the antennas will be positioned at a location where the multipath or other interference is relatively low, thereby improving overall signal quality and reliability.” Id. As Patent Owner contends, the proposed combination modifies Dou’s ground plane 310 to replicate Jing’s ground plane with dimensions of 36 mm × 60 mm and limits “the extent of Dou’s ground plane 310 so that it [does] not extend behind Jing’s antenna at 306, just like Dou does not extend it behind antenna 308.” See Pet. 35–36; Prelim. Resp. 20 (quoting Pet. 35); Prelim. Sur-reply 1; Ex. 1007 ¶ 120; Ex. 2010 ¶ 45. The lowest frequency of Jing’s antenna is 900 MHz. Ex. 1011, 2657–58; see Ex. 1007 ¶¶ 118, 154; Ex. 2010 ¶¶ 37, 44. The wavelength (λ) corresponding to a frequency of 900 MHz is 333.3 mm, and a quarter wavelength (λ/4) is 83.3 mm. Ex. 2010 ¶ 44. In the proposed combination, a distance of 60 mm separates the” slip op. at 49

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,349,200
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdNo claims unpatentable
  PTAB · Oct 31, 2025 · IPR2024-00777 · APJ Jameson Lee · IPR · Final written decision

  Claims 16–27 were not shown unpatentable because Petitioner failed to account for limitations 16[b] and 16[i] and their counterparts across the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes that a person of ordinary skill in the art “would have a Bachelor of Science degree in Electrical Engineering, Computer Engineering, Computer Science, Human Computer Interaction, or a related technical field, with at least one year of experience working in the field of user interfaces and/or content management.” PO Resp. 11 (citing Ex. 2040 ¶ 53). The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 10. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s (EX2040. ¶53) does not change the arguments set forth herein.” PO Resp. 11. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.4 4 All of our findings and conclusions would still be the same, however, had we applied Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

    “In its Reply, Petitioner does not assert that the district court’s construction is incorrect. We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

  • BurdenNot shown unpatentable

    “PO Resp. 30–31 (Figure 26 omitted). In its Reply, Petitioner still does not provide an articulated reason for placing user profile selection buttons, labeled with user names, within Horn’s panes 2601 or 2602. Reply 12–14. Although Horn does describe personalized profile, Petitioner points to no disclosure of Horn as to how a user would have selected his or her own profile from among a plurality of user profiles. Petitioner presents no reason for placing these user profile selection buttons, labeled with user names, gleaned from or suggested by Baumgartner, within either pane 2601 or pane 2602 in Horn’s workspace view. Further, pane 2602 contains “a list of all collections defined by MFS and the user,” and pane 2601 lists the source examined by the user to create his or her collections. Ex. 1005, 19:41–46. That disclosure suggests the contents of panes 2601 and 2602 are tied to one particular user. No rational basis is articulated by Petitioner to place user profile selection buttons within these panes which appear to be in the profile space of one user. For the foregoing reasons, Petitioner has not adequately accounted for limitation 16[b].” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “The test for sufficiency of a written description under 35 U.S.C. § 112 is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. The Court of Appeals for the Federal Circuit has explained: One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims. . . .”), the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997).” slip op. at 31

  Patent outcomesUS 11,017,815 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co., Ltd.All claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00509 · APJ Michael J Strauss · IPR · Final written decision

  Claims 1–4 and 6–19 are unpatentable as obvious over Throughtek-2012 and the Lorex Video; claims 1–3, 6, 10, 12–14, 17, and 18 are also unpatentable under two other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Bims, Petitioner proposes that a person of ordinary skill in the art at the time of the ’842 patent would have been a person having a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies. Pet. 11 (citing Ex. 1001 ¶¶ 15–16). Patent Owner does not provide any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7

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

    “Petitioner asserts “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 11 (citing Ex. 1001 ¶ 55; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. §42.100). Patent Owner presents no proposed claim constructions. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  Patent outcomesUS RE47,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00972 · APJ David C Mckone · IPR · Final written decision

  Claims 1–10 are unpatentable because Speight anticipates them; the Board found Peisa anticipation and Peisa–Heo obviousness unproven for the challenged claims in those grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of ordinary skill in the art “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field, as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree,” and that “[a]dditional education could substitute for professional experience and vice versa.” Pet. 14 (citing Ex. 1004 ¶¶ 47–49). Patent Owner does not contest Petitioner’s contention or propose a level of skill. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “agreement that this claim term should be read as reciting two mutually-exclusive alternatives with respect to the “third parameter.” Dec. 11. The parties do not challenge this construction in the Patent Owner Response, Reply, or Sur-reply. On the complete record, we construe “wherein resources are allocated for data of each channel having a second parameter above zero prior to another channel’s data for transmission having a third parameter less than or equal to zero” as reciting two mutually-exclusive alternatives with respect to the “third parameter.”” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition is required to identify “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). Petitioner argued in the Petition that “as properly construed, the claimed ‘first parameter,’ ‘second parameter,’ ‘third parameter,’ and ‘fourth parameter’ are four different parameters.” Pet. 17–18. In the Institution Decision, Petitioner prevailed on that point and “we agree[d] with Petitioner that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels.” Dec. 14. Patent Owner “relie[d] on the Board’s construction ‘that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels,’” and proposed distinct parameters in the Specification that it alleges are examples of second and third parameters, albeit not the same two parameters proposed by Petitioner. PO Resp. 9, 29. Petitioner now proposes new constructions for the second and third parameters that would limit those parameters to the two examples it advanced in the Petition and improperly supports these new constructions with new expert testimony and an exhibit from the prosecution of a later patent. Reply 20–25; Ex. 1040 ¶¶ 20–29; Ex. 1038. See also Consolidated Trial Practice Guide (“TPG”)10 73 (“Petitioner 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.”). As Patent Owner observes (Sur-reply 10 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 21), it has no opportunity to introduce rebuttal evidence contesting the new constructions. See TPG 73–74 (Nov. 2019) (“The sur-reply may not be accompanied by new evidence other than deposition transcripts of the crossexamination of any reply witness. Sur-replies should only respond to arguments made in reply briefs, comment on reply declaration testimony, or point to cross-examination testimony.”). We agree with Patent Owner that it would be unfair to consider Petitioner’s new construction. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”). Thus, Petitioner has forfeited its new claim construction arguments and they will not be considered. See TPG 74 (“While replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.”). Moreover, these arguments would be unpersuasive even if considered. Petitioner has, at most, cited description in the Specification to show that its identified second and third parameters are examples corresponding to the recited second and third parameters. Ex. 1005 ¶¶ 84–95. This description does not define the second and third parameters nor purport to exclude from the claims any parameter that would otherwise meet the language of the claims. The prosecution history to which Petitioner cites, that of a child application, took place after the prosecution of the ’466 patent and thus, does not constitute a definition or disclaimer of subject matter for claims of the ’466 patent. In any case, the brief argument in the cited response to office action, that “[i]n the algorithm, the first value is provided by the wireless network for each of a plurality of buffers where the buffer having the second value above a threshold transmits data first,” does not define the second and third parameters, disavow any values from those parameters, or even discuss the third parameter. Ex. 1038, 12. Petitioner’s extrinsic evidence, Dr. Akl’s testimony, does little more than repeat the arguments in the Reply and, thus, is of little value. Ex. 1040 ¶¶ 20–29. In sum, we maintain our construction that the second and third parameters are separate and different parameters, and not different instances of the same parameter for separate channels. Under this construction, RAAUq” and RAAUq’, respectively, could potentially be second and third parameters, as could RAAUq’ and RAAUq”, respectively, as long as they satisfy the rest of the pertinent language of the challenged claims.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable

    “production, we still would find that a skilled artisan would not have been able to ascertain from the disclosure in the ’421 application that RAAUq’ could take values less than zero. Instead, even if we were to credit Dr. Lomp’s testimony, to conclude that RAAUq’ can take negative values, a skilled artisan would need to program computer software to simulate the ’421 application’s algorithm and correctly choose starting parameters and other context variables without guidance from the description in the ’421 application. This case is similar to that in New Railhead, where the written description was insufficient because “one of ordinary skill in the art must first make the patented invention before he can ascertain the claimed features of that invention.” 298 F.3d at 1295. This case also is similar to Los Angeles Biomedical Research Institute, in which an application’s written description was insufficient because assumptions and starting variables were not knowable from the disclosure in the application. 849 F.3d at 1058. Thus, even if we were to conclude that Patent Owner has met its burden of production, a preponderance of the evidence shows that the ’421 application does not provide written description support for Alternative A. In sum, we conclude that the ’421 application does not provide written description support for the challenged claims and that, therefore, Speight is prior art to the challenged claims.” slip op. at 41

  Patent outcomesUS 9,681,466 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 9,681,466
• Apple Inc. v. Memoryweb, LLCSome claims unpatentable
  PTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision

  Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.

  RulingsFinal written decision

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

    “2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30

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

    “e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96

  Patent outcomesUS 11,017,020 mixed
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 11,017,020
• Netskope, Inc. v. Bitglass, Inc.All claims unpatentable
  PTAB · Dec 9, 2022 · PGR2021-00091 · APJ James J Mayberry · PGR · Final written decision

  Claims 1, 2, 4–10, and 12–16 are unpatentable; the Board found the asserted obviousness and written-description grounds persuasive, but did not reach specified grounds.

  RulingsFinal written decision

  • Skill levelOther

    “unpatentability of the challenged claims, and the burden of persuasion never shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding, Petitioner must support its challenge by a preponderance of the evidence. 35 U.S.C. § 326(e) (2011); 37 C.F.R. § 42.1(d) (2022). Accordingly, all of our findings and conclusions are based on a preponderance of the evidence standard.” slip op. at 15

  • Strike new argumentNew argument consideredNew argument disregardedOther

    “considering these arguments, we conclude that the arguments do not demonstrate a deficiency in Petitioner’s position. As to the third alleged new argument, we do not reach any of the Cronk-Woelfel grounds. Accordingly, we dismiss Petitioner’s motion as moot. B.” slip op. at 91

  • ExcludeOther

    “Owner’s “counter” Motion to Strike is dismissed as unauthorized. Finally, Petitioner’s Motion to Exclude Evidence is dismissed as moot.” slip op. at 93

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “1[a][iii], and 1[b][ii] are not disclosed in the ’989 application for the embodiment of Figure 11. Instead, as Patent Owner argues, these limitations are described with respect to the embodiment of Figure 3b. Accordingly, Patent Owner’s assertions require that a person of ordinary skill in the art would have understood that the inventors contemplated combining steps from the two embodiments of Figure 3b and 11. For the reasons discussed below, and as Petitioner asserts, the evidence does not support a person of ordinary skill would find that disclosure.” slip op. at 29

  Patent outcomesUS 10,855,671 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 10,855,671
• Vmware, Inc. v. Cirba Inc.All claims unpatentable
  PTAB · Dec 7, 2022 · PGR2021-00098 · APJ Russell E Cass · PGR · Final written decision

  Claims 1–63 are unpatentable under § 112(a) because the patent lacks written-description support for the claimed “already placed” and “issue instructions” limitations.

  RulingsFinal written decision

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

    “Pet. 20–54. With its Petition, Petitioner submitted the Declaration of Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary Response. Paper 11. We instituted trial on all grounds of unpatentability. (Paper 12 (“Inst. Dec.”)).” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner

    “term “placing” requires more than a theoretical placing or planning to place as part of an analytical solution. Turning first to the claim language, we agree with Petitioner that the language of the independent claims is consistent with “placement” occurring after and separately from the analytical evaluation process. See Pet. Reply 3. For example, claim 1 is directed to a system for “determining placement of source computer systems on target systems,” the system configured to “determine a placement” by employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8– 36. The second “evaluate compatibility” operation is “to determine if the specific source system can be placed with those other source systems on the specific target system,” which suggests that what is being evaluated is whether the source system can be actually placed (e.g., moved or transferred) to the target system. Id. at 40:18–27 (emphasis added). Similarly, the third “evaluate compatibility” operation involves “evaluating the impact on resource utilization of the specific target system of placing the specific source system on the specific target system,” which suggests that what is being evaluated is the impact on resource utilization once the source system is actually moved or transferred to the target. Id. at 40:28–32 (emphasis added). Additionally, the claim states that, based on the “evaluate” operations, the claimed system “determine[s]” a placement, not that it executes the placement. Id. at 40:8–11. The actual placement seemingly occurs after the final claimed operation of “issu[ing] instructions to place” the source system(s) on to the target system “in accordance with the determined placement.” Id. at 40:37–39. Independent claims 32 and 63 include similar language. Id. at 42:36–43:3, 45:1–46:19. Had the patent applicant wanted to cover systems that were merely “hypothetically placed,” language to that effect could have been added to the claim.” slip op. at 19

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “As noted above, the claim language requires evaluating compatibility between a specific source system and one or more other source systems “already placed” on the target system. Paragraph 82 does not disclose the evaluation of compatibility of a source system and another source system as part of the “forward consolidation.” Additionally, paragraph 82 does not disclose that “existing target systems 16” have source systems “already placed” on them. Thus, paragraph 82 does not provide the level of detail recited in the limitation under either party’s definition of “placed.” In addition, as noted above, we have interpreted “placed” to require an actual placement rather than merely “planning to place” or a theoretical placement. See § II.A.2, supra. Therefore, even if the “existing target system 16” had theoretical or hypothetical systems added to it as part of the consolidation analysis, those would not be systems that are “already placed” on the target system.” slip op. at 34

  Patent outcomesUS 10,951,459 unpatentable
  Claim construction§ 112 disclosure
  Patents in suitUS 10,951,459

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.