- Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31
Patent outcomesUS 7,314,167 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,314,167 - Luxottica Of America Inc. v. E-Vision Optics, LLCSome claims unpatentablePTAB · Dec 23, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–20, 22–31, and 33–37 are unpatentable; claims 21 and 32 were not shown unpatentable, principally because the proposed combinations failed to establish motivation to combine or the required airtight seal.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find that the proposals from the parties substantially overlap, such that it remains unclear whether any substantive difference exists. Notably, neither party argues that the minor differences in the proposals lead to a different outcome on any issues in this proceeding. Based on our review of the proposals, we apply Patent Owner’s proposal because it is consistent with the problems and solutions disclosed in the ’483 patent and prior art of record. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of the issues addressed in this Decision would not change if we applied Petitioner’s proposal.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“hermetically sealed” module does not encompass waterproof modules that are not airtight. First, as Petitioner admits, as a general matter, “[s]omething that is hermetically sealed is sealed so as to be airtight.” Pet. 28 (citing Ex. 1002 ¶ 103; Ex. 1010, 269); PO Sur-reply 16. Petitioner later tries to argue that the specification puts a different spin on this meaning, but still acknowledges that “[o]utside the context of the ’483 patent, a hermetic seal is sometimes equated with an airtight seal.” See Pet. Post-hearing 2–3 (citing Ex. 1002 ¶ 103; Ex. 1010, 269). Based on our review of the record, the “ordinary meaning” of “hermetically sealed” means “airtight,” and, as noted above, “airtight” is not the same thing as “waterproof.” Second, the claims support Patent Owner’s position by including dependent claims that separately claim a “hermetically sealed” module (claims 13 and 32) and a “waterproof” module (claims 15 and 34), strongly suggesting that the terms have a different scope to avoid rendering some claims redundant. See Ex. 1001, 11: 65–66, 12:3–4, 12:52–53, 12:55–56. Petitioner argues in its Post-hearing brief that claims requiring waterproof modules are “a narrower species” of hermetic seal, but fails to explain how hermetic, airtight, and waterproof seals would not fall within the scope of both claims using its approach. Pet. Post-hearing Reply 2. Petitioner’s earlier argument in its Reply also seems to cut against this position by asserting that the specification “treats hermitically sealing as conventional and equivalent to waterproofing,” with different dependent claims directed to two allegedly “equivalent” terms making little sense. Pet. Reply 14 (emphasis added). The most natural reading of the claim language suggests that “hermetically sealed” means airtight, and does not encompass modules that are waterproof but not airtight. Third, while the specification does not define “hermetically sealed” and uses “waterproof” and “hermetically sealed” in similar contexts, it does not suggest that “hermetically sealed” does not require an airtight seal consistent with its ordinary meaning. See Pet. Reply 14–15 (citing Ex. 1001, 6:47–53, 9:15–18, 10:47–50). Instead, the specification states that hermetic seals prevent water from contacting electronics, which remains consistent with Patent Owner’s position because airtight hermetic seals are also waterproof. See Ex. 1001, 6:47–53, 9:15–18. The specification also states that “[t]he module preferably houses any of the aforementioned electrical components in a substantially water-proof and wear resistant/moisture resistant environment and is preferably hermetically sealed.” Id. at 10:47–50 (emphasis added). This passage supports Patent Owner’s position by suggesting that the preferable “hermetically sealed” module goes beyond mere water resistance. See PO Sur-reply 16–17. slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Petitioner’s Anticipation Arguments and Evidence Petitioner argues that Howell-596 discloses every limitation of claims 1, 9, 10, 14, 15, and 18, and points to specific portions of Howell-596 and expert testimony to support its arguments. See Pet. 10–20 (citing Ex. 1002; Ex. 1003). We have reviewed the evidence and arguments of record and find that Petitioner has shown, by a preponderance of the evidence, that the limitations in claims 1, 9, 10, 14, 15, and 18 are disclosed by Howell-596 for the reasons set forth in the Petition, which we adopt as our own. See id.11 Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Based on these undisputed points and the parties’ arguments, we agree with Patent Owner that Petitioner fails to establish that a POSITA would have been motivated to locate Howell-596’s module housing 1700, which contains its UV detection system 1500, behind a user’s ear. Petitioner never squarely addresses the fact that placing Howell-596’s UV detection system behind a user’s ear would negatively impact its performance. Pet. 31–33; Pet. Reply 17–22. As a result, even if we accept Petitioner’s arguments and evidence as to the various advantages when placing electronics behind a user’s ear, it fails to establish a motivation to combine that requires placing Howell-596’s module housing 1700, and therefore its UV detection system, behind a user’s ear. Petitioner never acknowledges the readily apparent disadvantages of placing a UV detection system behind the ear, where it may not work at all. See Pet. 31–33. Nor does Petitioner argue that, in its combination, adjustments would be made to ensure accurate operation of Howell-596’s UV detection system. See id. Similarly, Petitioner notes that both Howell-596 and Howell-833 disclose UV sensors behind the ear of a user, but those teachings do not establish that placing Howell-596’s module behind the ear would ensure proper operation of its UV detection system housed within that module. See Pet. Reply 17–22. Instead, even though Howell-596 discloses a sensor behind the ear of a user, it maintains the UV detection system in a module toward the front of the temple, away from the ear. See id. at 18–19; PO Surreply 21–22; Ex. 1003 ¶ 205 (describing UV detection system 2102), Fig. 21 (showing UV detection system 2102 toward the front of the temple). Moreover, Petitioner’s reliance on the sensor placed behind the ear of the user in Howell-596 lacks weight because that sensor merely indicates that the device “is being worn by a user,” which serves a very different purpose than Howell-596’s UV detection system, which seeks to monitor a user’s exposure to UV radiation, a central purpose of Howell-596’s eyewear. See Ex. 1003 ¶ 205, code (57). Howell-833 also employs a UV sensor behind the ear, but Petitioner does not establish that it operates any differently than the “being worn” sensor in Howell-596, and therefore does not establish that Howell-596’s UV detection system would still work for its intended purposes in Petitioner’s proposed combination. See Pet. Reply 19–20.” slip op. at 29
Patent outcomesUS 8,708,483 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,708,483 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,139,944 - PTAB · Apr 30, 2025 · IPR2024-01494 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 5, 6, and 9–20 on all asserted grounds after finding a reasonable likelihood that claim 5 would have been obvious over Bowen and Soukup.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 5, 6, and 9–20 of the ’909 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments based on the current record. Dr. Bokor testifies that “as is evident from the TMR equation, . . . lowering the resistance (barrier height) for parallel spin electrons [(i.e., Rp)] compared to antiparallel [(i.e., Rap)] improved TMRs.” Ex. 1024 ¶ 169 (citing Ex. 1035, 3273) (emphasis added). Dr. Bokor’s testimony is consistent with the TMR equation above, which has Rp as the only term in the denominator, and reflects that Rp would be lowered disproportionally, or otherwise the TMR would not have “improved.” Id. It also appears to be supported by other evidence of record. See Ex. 1035, 3273 (noting the” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Finally, we note that, although Petitioner has made a sufficient showing with respect to obviousness, we are not persuaded by Petitioner’s inherency argument. See Pet. 36. Specifically, Petitioner has not established that a barrier height of 0.1–0.85 eV is necessarily present in, or the natural result of, a tunnel barrier layer having some amount of oxygen vacancy defects. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (“When the prior art does not expressly disclose a claim limitation, ‘inherency may supply a missing claim limitation in an obviousness analysis.’ . . . Inherency is established in the context of obviousness when ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’”). Petitioner points to the ’909 patent’s statement that “[w]hen there are oxygen vacancy defects, the potential barrier height of the MgO tunnel barrier is thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV), which is thought to result in an increase in the tunneling current.” Ex. 1017, col. 7, ll. 19–23; see Pet. 36. Bowen, however, has “oxygen vacancy defects” in its MgO layer and “[o]xygen vacancies are naturally present in every oxide” according to Petitioner, but Bowen discloses a barrier height of 0.9 eV, which is outside the claimed range (albeit only slightly). Pet. 13, 23–24. Thus, Bowen contradicts Petitioner’s assertion that a barrier height within the claimed range of 0.1–0.85 eV is inherent when there are oxygen vacancy defects.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,123,463 - PTAB · Feb 14, 2025 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Institution
Instituted review of claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a relatively high level of skill, such as having at least a bachelor’s degree in the field of computer science and/or electrical engineering, together with 2–3 years in the financial technology sector.” Pet. 16. Petitioner adds that a person having ordinary skill in the art “would have knowledge of the commercial and scientific literature pertaining to securing transactions” and “would also have knowledge of processing devices.” Id. at 16–17 (citing Ex. 1002 ¶ 19). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See Prelim. Resp. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this stage of the proceeding, we are not persuaded that the term “embedded” should be narrowly construed in the manner proposed by Patent Owner. We find nothing in the claims that requires us to import a “hidden” or a “provide security” limitation into the claims. Claim 1, for example, merely recites “the image having information embedded therein, including information related to a transaction,” and “generat[ing] an output based on the information embedded in the image.” Ex. 1001, 16:24–33 (emphasis added). The claim language therefore does not require limiting embedded information in the proposed way.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“As discussed above, disclaiming or disavowing claim scope requires a “clear and unmistakable disclaimer.” Thorner, 669 F.3d at 1367. We are not persuaded that the cited portion can be read to clearly and unmistakably disavow claim scope. The cited portion of the Specification discusses various input parameters for decoding a captured image. Ex. 1001, 6:8–10. When viewed in context, “other information” refers to other predetermined information, including “the corresponding private key,” “stored in the memory 150,” which “may be used to decrypt or decode the captured image.” Id. at 6:13–22; see also id. at 5:18–20 (private keys are stored in memory). We therefore read the Specification as merely listing possible input parameters for decoding an image and not disclaiming “the corresponding private key” from the scope of “predetermined information.” After all, the very next sentence states that “predetermined information may include, for example, address information, personal profile information, and payment account information.” Id. at 6:17–22 (emphasis added). Given the various broad categories included in “predetermined information,” we are not persuaded, for purposes of institution, that “predetermined information” excludes a private key. We further determine that this preliminary construction is sufficient to resolve the Petitioner’s anticipation and obviousness contentions presented under Petitioner’s Ground 1, and no further construction of the term is necessary.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,314,167 - PTAB · Jan 7, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–37 on all asserted grounds after finding a reasonable likelihood that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’483 patent based on any ground Petitioner raised or reasonably could have raised in this Petition.” Pet. 82. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Petitioner that the record fails to show that Hattori-912 is cumulative of Krulevitch. As Petitioner correctly points out, Patent Owner does not adequately support its cumulativeness argument by comparing the disclosures of Hattori-912 and Krulevitch. See Prelim. Resp. 27. Patent Owner seems to assume that Petitioner’s mere reliance on Hattori-912 to teach similar limitations as those arguably disclosed by Krulevitch establishes the cumulative nature of the disclosures, but merely relying on new prior art to teach the same limitations as art before the Examiner, standing alone, does not establish cumulativeness of the art as a whole. See id. The situation here underscores this point, where the new prior art (Hattori-912) expressly discloses aspects of eyewear that the prior art before the Examiner (Krulevitch) does not, rendering Hattori-912 arguably more readily combinable with other eyewear prior art such as Blum-741. See Pet. 53–65. Moreover, Petitioner expressly argues that Hattori-912 discloses eyewear limitations that Krulevitch does not. See id. at 55–59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’ in which electronic components are embedded”), 64–65 (“Hattori-912 discloses that the sealed module is embedded in the eyewear frame.”). Under these circumstances, we do not view the disclosures of Hattori- 912 and Krulevitch, or the obviousness arguments they raise, as sufficiently similar to satisfy the first prong of the Advanced Bionics framework. We also decline Patent Owner’s invitation to discretionarily deny on the basis that the grounds based on Blum-741 and Hattori-912 would present a waste of resources.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 19
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 8,708,483 - PTAB · Jan 6, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As correctly noted by Petitioner (see Prelim. Reply 1), the Guidance Memo is “binding agency guidance.” Guidance Memo at 3. “[T]the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. at 7. The Guidance Memo makes no exception for parallel litigation in which expert reports have been exchanged or litigation with a third party involving the challenged patent. Nor has Patent Owner identified any instance in which the Board has determined there to be such exceptions to the Director’s guidance. Indeed, Patent Owner admits that it “is unaware of any post- [Guidance] Memo decision discretionarily denying institution in these circumstances.” Prelim. Sur-reply 1. Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 1 is anticipated by Brunton.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree.” Pet. 9 (citing Ex. 1002 ¶¶ 28–31). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 9–10 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’174 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require an express construction to resolve the challenges here.” Pet. 10. Petitioner notes that “the ’174 patent describes a number of claim terms, many in quotation marks, by what the terms refer to or may refer to” and asserts that “[t]hese descriptions in the specification are consistent with the plain and ordinary meaning of these claim terms.” Pet. 10–11 (citing Ex. 1002 ¶¶ 50–51). Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally Prelim. Resp. At this time, we determine that no express construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,801,174 - PTAB · Dec 18, 2024 · IPR2024-00981 · APJ Georgianna W Braden · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Kleve-based obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute review. 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. Therefore, pursuant to § 314, we institute an inter partes review of claims 1–20 in the ’188 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Examiner’s notation indicates that Zaid was considered. We do not agree, however, with Patent Owner’s position regarding Petitioner’s challenges based on Kleve. The challenges over Kleve alone or in combination with Sekiyama, Mottla, and/or Patenaude counsel us not to discretionarily deny institution. Patent Owner does not dispute that Kleve, Sekiyama, Mottla, and/or Patenaude were not before the Office. See Prelim. Resp. 15–24; Prelim. Sur-reply 5. Although Patent Owner characterizes the Petition’s challenges based on Kleve as an “attempt to end-run Section 325(d) by including additional grounds that lack merit” (Prelim. Resp. 23–24), we disagree. Rather, explained in detail below, we are persuaded by Petitioner’s challenges based on Kleve and it is the reason for institution. Accordingly, at this stage of the proceeding, Petitioner’s challenges based on Zaid are not relevant. As such, we determine any analysis under Advanced Bionics is inapplicable, and we do not exercise our discretion under § 325(d) to deny institution. b. Advanced Bionics Prong Two: whether “the Office erred in a manner material to the patentability of the challenged claims” Because the Board is persuaded to instituted based on challenges not involving Zaid, , we will not consider the second part of the Advanced Bionics framework.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We agree with Patent Owner that the language in Petitioner’s stipulation does not eliminate completely any overlap with district court invalidity arguments. Petitioner’s stipulation allows Petitioner to use any prior art reference that is not relied on in the Petition. This may not fully address “concerns of inefficiency and the possibility of conflicting decisions.” See Fintiv, Paper 11 at 12. Nonetheless, Petitioner’s stipulation does decrease the overlap in issues and mitigates to a great degree the concerns regarding duplicative efforts and potentially conflicting decisions. Additionally, we agree with Petitioner that the fact that the Petition challenges claims that are not asserted in the litigation weighs marginally in its favor. Based on the foregoing discussion, we determine that factor four weighs against discretionary denial.” slip op. at 22
- BurdenInstituted
“teaches, or at least suggests, that the user’s “request includes a condition of use of the vehicle as set by the user via the user account” because we are persuaded that the distribution of Kleve’s virtual e-key includes a rental period restriction. Specifically, we are persuaded by the Petition’s reliance on Kleve’s express disclosure that “terms and conditions for the rental period” are agreed to before the virtual key is generated. See Pet. 15 (quoting Ex. 1004 ¶ 38). We preliminarily agree with Petitioner that Kleve describes an e-key that is only operable during a rental period because Kleve discloses “[t]he virtual key may also be sent to the vehicle configuring the VCS to enable the keyless drive system for the appropriate Temporary User during a given rental period.” Ex. 1004 ¶ 39; see Pet. 16. We note Patent Owner’s citations to Kleve’s Figures 2 and 5 that indicate control restrictions are added after the distribution of a virtual key. At this stage of the proceeding, however, based on the disclosure of Kleve we are persuaded the rental period would be included as a restriction when the virtual key is created at step 206 of Figure 2 prior to the distribution of the virtual key at 210. See Ex. 1004 ¶¶ 38–39. At this stage, we credit the testimony of Dr. Almeroth, who opines that Kleve discloses that certain restrictions are sent with the request to generate a virtual key. Ex. 1003 ¶¶ 118–123. Specifically, Dr. Almeroth testifies that Kleve discloses that the virtual key “enable[s] the keyless drive system for the appropriate Temporary User during a given rental period.” restrictions were sent with the request so that the virtual key could be associated with said restrictions.” Id. (citing Ex. 1004 ¶¶ 39, 68 (“Once the rental period has expired the virtual key may be reset and cleared from the VCS.”)). Dr. Almeroth further testifies that the virtual key in Kleve is always generated after the rental agreement. Id. (citing Ex. 1004 ¶¶ 39, 68 (“[O]nce the Temporary User selects the vehicle, pays the appropriate amount and signs a consent agreement, then the system may generate a virtual key to distribute to the Temporary User and VCS.”)). Thus, after review of the arguments and evidence, we find that Petitioner has provided adequate explanation and supporting evidence that Kleve teaches or suggests the challenged claim limitation.” slip op. at 40
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,365,188 - AT&T Services Inc. / T-Mobile USA, Inc. et al. v. Innovative Sonic Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00991 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground for claims 1–11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it will prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that “a person with the 3-year experience proposed by Petitioner would not have the intimate knowledge of the existing standardized cellular system” required to understand “how a proposed change would impact the rest of the system.” Prelim. Resp. 7. But Patent Owner also states that engineers participating in the development of the relevant cellular specifications “would not be expected to be familiar with all relevant aspects of the specifications” given their length and complexity. Id. at 7–8. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above, because we are satisfied that it generally comports with the level of skill necessary to understand and implement the teachings of the ’883 patent and the asserted prior art. To the extent Patent Owner disagrees (see Prelim. Resp. 6–8), it fails to sufficiently explain its contrary position by, for example, providing its own proposed level of skill.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the Board does not need to expressly construe any terms” in this proceeding because “the prior art in this Petition discloses all limitations under any plausible construction.” Pet. 10–11. Patent Owner similarly states that “all terms are entitled to their plain and ordinary meaning.” Prelim. Resp. 21. We agree with the parties that it is not necessary to construe any claim terms or phrases in this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy.”) (cleaned up).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“(step 406) discloses the claimed “second request” (Pet. 44–45),9 but Petitioner fails to show that this message discloses a request. See Prelim. Resp. 46–48. Han explains that the dual connection setup response in step 406 is a “dual connection setup request acknowledge (ACK)” message sent in response to “dual connection setup request” received in step 404. Ex. 1007 ¶¶ 40–42; accord Pet. 42–44. An acknowledgement is not a request, and Petitioner fails to sufficiently support its contention to the contrary (see Pet. 44–45). According to Petitioner, the acknowledgement message is “a request to change a data path” because the data path is “change[d] . . . based on this message” (id. at 45 (citing Ex. 1007 ¶¶ 42–47; Ex. 1003 ¶ 202)); however, this is faulty reasoning. At most, Petitioner’s argument shows that the acknowledgement is a message “to change a data 9 We note that this is the same message relied upon by Petitioner to teach the claimed “accept message” recited earlier in claim 1. Compare Pet. 44– 45, with id. at 43–44. We need not (and do not) decide whether Petitioner has sufficiently shown that this message discloses two separate claim elements. path,” not that it is a request to do so. In other words, even if Han’s acknowledgement message (in step 406) is a condition precedent to changing the data path, this does not make the message a “request.” Although Dr. Mahon agrees with Petitioner, his analysis mirrors Petitioner’s arguments and suffers from the same deficiencies. See Ex. 1003 ¶¶ 202– 203; see also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1473 (Fed. Cir. 1997) (“An expert’s conclusory testimony, unsupported by the documentary evidence, cannot supplant the requirement of anticipatory disclosure in the prior art reference itself.”).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,736,883
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.