• Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.All claims unpatentable
  PTAB · Feb 23, 2026 · IPR2024-01312 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 1, 2, 4–6, 16, 17, and 19–21 are unpatentable as obvious over Lundahl and Larsen; Ground 2 was conceded, and the motion to exclude was denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner asserts that Petitioner has not provided a valid justification for requiring a POSITA to have both an engineering degree and a medical degree. Prelim. Resp. 22. We agree, insofar as Petitioner has not clearly set out any particular explanation or evidence in support of its dual-degree requirement. In all other respects, we note that the parties’ proposed definitions are largely similar. Because we determine that Patent Owner’s proposed definition is reasonable and consistent with the ’028 patent and the cited art, we adopt Patent Owner’s definition. In any event, our Decision does not turn on this level of skill determination. B.” slip op. at 12

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

    “device “[f]or the treatment of large-area tissues,” such as the backs of human patients, wherein several applicators 13 are “flexibly connected to each other through hinges.” Id. (quoting Ex. 1004 ¶ 72). Petitioner asserts that a POSITA would have been motivated “to incorporate Larsen’s solution of connecting light applicators by hinges, to allow for adjustability of Lundahl’s device to provide the desired irradiance and irradiance uniformity to all target areas during PDT.” Id. (citing Ex. 1015 ¶ 127). According to Petitioner, a “POSITA would have had a reasonable expectation of success in combining Lundahl with Larsen, because both references describe similar illuminators for using light to treat conditions on a patient’s skin.” Id. at 31 (citing Ex. 1015 ¶ 128). Petitioner’s proposed modification of Lundahl also involves using LEDs as a light source instead of Lundahl’s fluorescent tubes. Id. According to Petitioner, a POSITA would have been motivated to make this change because: (1) LEDs had a lower cost and a longer lifetime than fluorescent tubes; (2) fluorescent tubes were known to have inconsistent light output within the tube itself; and (3) “the use of LEDs would be more practical to reduce spacing between light sources and the edges of the panels, as opposed to the bulky metal couplings at the end of fluorescent tubes, to reduce optical dead space across the light surface.” Id. (citing Ex. 1014, 4:41–42, 6:31–42; Ex. 1015 ¶ 129). Petitioner asserts that a POSITA would have had a reasonable expectation of success with this modification because Lundahl and Larsen “describe similar illuminators and the conversion from fluorescent tubes to LEDs was a routine practice prior to 2015.” Id. at 32 (citing Ex. 1015 ¶ 131). Patent Owner does not meaningfully dispute the Petitioner’s proposed reasons to combine Lundahl and Larsen. See generally PO Resp. To the extent Patent Owner argues that a POSITA would not have been motivated to make the combination because it would negatively affecting uniform illumination (PO Resp. 24), the motivating benefit here—using adjustable LED panels instead of monolith fluorescent tubes—outweighs the alleged disadvantages for the many reasons given by Petitioner, including greater adjustability and improved LED performance. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify.”); Reply 14. We are persuaded that a POSITA would have been motivated to combine Lundahl and Larsen for the reasons advanced by Petitioner.” slip op. at 20

  • Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner

    “Patent Owner further argues that Petitioner’s reasoning (i.e., that it would have been obvious to try placing the hinges on the inner side surfaces) is unsupported and conclusory. PO Reps. 53–54. Patent Owner argues that Petitioner fails to identify a single prior art reference showing hinged structures on inner side surfaces. Id. This argument ignores that Larsen expressly identifies hinges on at least bottom side surfaces, and Petitioner merely proposes modifying their location from the bottom sides to inner sides. We find credible Dr. Grove’s testimony that relocating hinges would have been within the level of ordinary skill in the art. Ex. 1015 ¶ 155. Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9 We further point out that the ’028 patent also suggests that gaps do” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9” slip op. at 24

  Patent outcomesUS 11,697,028 unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,697,028
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00518 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach limitations 1(c) and 1(g) under the proper construction of “style.”

  RulingsRemand decision

  • RemandOther

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

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

    “Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9

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

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00572 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach the limitations at issue under the Federal Circuit’s construction of “style.”

  RulingsRemand decision

  • RemandDecided for petitioner

    “We agree with Petitioner. Lemay Web discloses that the style settings of width, height, pause, and repeat for the pocket watch images can be changed by changing the values for width, height, pause, and repeat in the HTML file. Ex. 1004, 89–90. This results in changing the size, duration, and frequency of the display of the multiple pocket watch image objects without changing the image files or the Java applet. Id. That is, the 12 image objects of Lemay Web can be uniformly formatted by applying and altering the style settings of the HTML file, which is stored separately from the image objects and the Java applet. Id. at 88– 89. In our Final Written Decision, we wrote that “Lemay Web discloses that the image files that are displayed as the animation object are separate from the HTML.” Ex. 1004, 88–89.” Dec. 22. The Federal Circuit wrote that “how the Board evaluated what constitutes separateness in the prior art software is less than clear.” Opinion, 13 n.7. To be clear, the animation of Lemay Web comprises 12 different pocket watch image objects. Ex. 1004, 89. The HTML file that contains the style settings for the 12 different pocket watch image objects is stored separately from the 12 different pocket watch image objects. Id. at 88–91. The style of the 12 different pocket watch image objects can be altered by changing the values of the style settings in the separate HTML file, thus allowing the style to be uniformly applied to each of the associated 12 pocket watch image objects when the pocket watch image objects are created on the web page. Id.; see Ex. 1030 ¶¶ 28–29; Dec. 21–22. In conclusion for issue (B), we find that Lemay Web teaches applying the style located in the separate HTML file to the pocket watch image objects when creating the pocket watch image objects on the web page. Therefore, Lemay Web’s style is “defined separately from any single object” as claimed. Because Lemay Web’s style can be applied to one object and more than one object and Lemay Web’s style is defined separately from any single object, we find that the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style.”” slip op. at 12

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

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

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

    “Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “What you see in the bottom right is an excerpt from the Lemay Web book . . . [y]ou can still use the Java applet just by putting this applet code into your HTML file. So this shows the animator class is going to be run within height or how big a window within the browser should be allocated in this applet. You can . . . tell the animator class how long to pause in between each image. So that’s a style that’s being applied to all of the multiple images that make up this animation. Ex. 2029, 746:23–747:7. Patent Owner then asked GoDaddy’s expert “for each unique animation you want to create with this animator class that’s shown here, you’re going to have to have a unique set of HTML code with the settings along with any of the images you’ll want to associate with the animator class, right?” Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91.” slip op. at 17

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00597 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 over both listed prior art combinations; Lemay Web teaches the claimed style under the Federal Circuit’s construction.

  RulingsRemand decision

  • RemandOther

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

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

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6

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

    “Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2021-01226 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under § 103 over the asserted combinations because the prior art teaches the limitations under the proper construction of “style.”

  RulingsRemand decision

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

    “Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8

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

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91. Contrary to Patent Owner’s contention, the testimony of GoDaddy’s expert further supports our finding that the style settings in the HTML file of Lemay Web are applied to the multiple image objects that make up the animation. Patent Owner does not identify anything else from the district court trial connected to the “style” issue raised by the Federal Circuit. We conclude that the jury verdict does not change our decision here. IV. CONCLUSION” slip op. at 18

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Albany International Corp. v. Voith Patent GmbHInstituted
  PTAB · Dec 12, 2025 · IPR2025-01116 · APJ Christopher M Kaiser · IPR · Institution

  The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Sudre, Lee, and Penven.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). In other words, a decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, if the Board institutes trial, it will “institute . . . on all grounds in the petition.” PTAB Consolidated Trial Practice Guide, 5–6 (Nov. 2019)1 (“CTPG”); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had at least (1) a Bachelor’s Degree (or higher) in material science, materials engineering, mechanical engineering, textile engineering, or a related field, and (2) a minimum of two years of working experience in textiles engineering, fibers and textiles manufacturing, or a related field.” Pet. 4 (citing Ex. 1003 ¶¶ 21–22). Petitioner also argues that “[a]dditional education could substitute for professional experience, and vice versa.” Id. On the present record, Patent Owner does not contest Petitioner’s proposed level of ordinary skill. Prelim. Resp. 25–26. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’566 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “Both parties argue that no claim terms require express construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 26. On the present record, we agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent the parties’ arguments regarding unpatentability do address claim construction issues, we address these issues below.” slip op. at 10

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

    “articulated a reason why a person of ordinary skill in the art would have combined the teachings of Sudre, Lee, and Penven. Prelim. Resp. 60–63. In particular, Patent Owner argues that a person of ordinary skill in the art “would not have been motivated to look into Penven to modify the teachings of Lee because Lee and Penven disclose substantially different structures.” Id. at 60–61. This argument does not address Petitioner’s proposed reason to combine, which looks to Lee and Penven each to modify Sudre, not to Penven to modify Lee. See Pet. 79–81. In addition, “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). In other words, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Petitioner provides “some articulated reasoning with some rational underpinning” to combine the teachings of Sudre with those of Lee and Penven. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, Petitioner directs us to Sudre’s teaching of “a method for manufacturing PMC,” to Sudre’s lack of teaching of “specific parameters, such as warp thread size and spacing” to satisfy the “particular requirements” of its fabric. Pet. 79 (citing Ex. 1003 ¶¶ 248–250; Ex. 1004, 1:2–5, 6:14–17). As Petitioner points out, id. at 79–80, Lee and Penven provided yarn diameters and loop diameters that were conventional, and there is evidence of record that a person of ordinary skill in the art would have used these conventional diameters in constructing Sudre’s paper machine clothing. Ex. 1003 ¶¶ 258–261, 263–266; Ex. 1006, 3:64–66.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,261,566
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10

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

    “Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28

  Patent outcomesUS 10,574,894 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Valve Corporation v. Ironburg Inventions Ltd.All claims unpatentable
  PTAB · Dec 2, 2025 · IPR2017-00858 · APJ Mitchell G Weatherly · IPR · Remand

  On remand, the Board held claims 18, 19, 21, 26, and 29 unpatentable as obvious over Burns and LaCelle; collateral estoppel also rendered those claims unpatentable.

  RulingsRemand decision

  • Skill levelSkill level board ownDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Valve contends that the ordinarily skilled artisan would have: a bachelor’s degree in an industrial design or engineering field, and approximately two years of relevant experience, for example. Alternatively, the same or an equivalent level of skill in the art could be obtained by end users or hobbyists who have substantial experience modifying or creating customized game controllers that include features to better suit their needs, even without any college education. Pet. 10 (citing Ex. 1009 ¶ 11). Ironburg, without expressly defining the level of ordinary skill, contends that a college degree of the type identified by Valve is not required. See Supp. PO Resp. 4–6. Ironburg notes that the level of ordinary skill is “relatively low” and the technology involved “is simple and straightforward.” Id. at 4 (citing Ex. 2016 ¶ 21). Ironburg’s contentions regarding the level of ordinary skill are consistent with Valve’s position, id. at 6, which we apply in our analysis. D. Whether Claims 18, 19, 21, 26, and 29 Are “Patentably Distinct” from” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Ex. 1001, 10:65–11:3. In IPR2016-00948, in which we addressed similar claim limitations in a related patent, U.S. Patent 8,641,525 (Ex. 1038, the “’525 patent”),12 we found that “thickness” as used in claims such as claims 18 and 19 refers to “the dimension of the elongate member perpendicular to 12 Claims 10 and 11 of the ’525 patent contain the limitations directed to the thickness of the elongate member that substantially parallel the limitations introduced in claims 18 and 19 respectively. Compare Ex. 1038, 5:13–16, with Ex. 1001, 10:65–11:3. the surface of the elongate member (i.e., also the direction of displacement when the user activates the control function).” Ex. 1058, 10–11; Ex. 1055, 13; Ex. 1056. We interpret “thickness” the same way in this proceeding.13” slip op. at 16

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

    “2. Whether the Combined Teachings of Burns and LaCelle Describe All Elements of Claims 18, 19, 21, 26, and 29 Valve argues that it is “undisputed that all elements of base claim 1 are taught by the combination of Burns in view of LaCelle.” Valve Remand Br. 21 (citing Pet. 33–38; Ex. 1009 ¶¶ 23–25, 27–29). Ironburg disagrees, responding that “neither Burns nor LaCelle discloses the first control with an elongate member having a second surface arranged to be non-parallel with the back, outer surface of case.” Ironburg Remand Br. 20. Ironburg’s argument appears to rest on the issue of whether LaCelle describes its underside items as a control. We have already found that LaCelle’s underside items are controls as explained above. However, even if LaCelle did not disclose that its underside items were controls, Valve relies upon Burns as describing this aspect of claim 1. Valve Supp. Reply 9–10. Either way, Valve persuades us that the Burns and LaCelle, when combined as Valve suggests, teach every element of claim 1. In Parts II.D.1–4 above, we have also analyzed the parties’ arguments and supporting evidence on the issues of whether Burns describes the limitations introduced in each of claims 18, 19, 21, 26, and 29. For the reasons expressed above, Valve persuades us that Burns and LaCelle, when combined as Valve suggests, teach every element of dependent claims 18, 19, 21, 26, and 29. We have already concluded that Valve has proven that an ordinarily skilled artisan would have been motivated to combine teachings of Burns and LaCelle to arrive at the invention of claim 1, and those motivations also suffice for dependent claims 18, 19, 21, 26, and 29, all of which introduce limitations that we find to be described by Burns. Accordingly, we find that Valve has proven by a preponderance of evidence that the combined teachings of Burns and LaCelle render claims 18, 19, 21, 26, and 29 unpatentable as obvious.” slip op. at 25

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

    “On the first issue, we find that LaCelle’s underside items would have been understood by an ordinarily skilled artisan as a “control.” LaCelle describes the article illustrated in all its figures as a “game controller.” Ex. 1005, code (57). Dr. Rempel testifies that even if an ordinarily skilled artisan “were not 100% certain that the identified features on the back of the . . . LaCelle . . . controller[] are functional controls, their location and appearance certainly suggests functional back controls to one of ordinary skill in the art (even if another interpretation were also possible).” Ex. 1019 ¶ 12. The Federal Circuit has instructed us that we erred by failing to consider Dr. Rempel’s testimony supporting Valve’s Supplement Reply. Valve II, at 16. Dr. Rempel’s testimony is consistent with the manner in which LaCelle graphically depicts the items on the underside of its game controller, and we credit that testimony as being persuasive. Additionally, as we explain below, we do not find that Valve must prove that LaCelle describes its underside items as a control to support its position that an ordinarily skilled artisan would have been motivated to apply the curved shape of LaCelle’s underside items to the surface of Burns’s elongate members. On the second issue, we find that LaCelle undisputedly describes its items on the underside of the controller as being curved. On the third issue, the probative value of Valve’s Supplemental Reply argument and supporting evidence, the Federal Circuit held that we ignored important testimony establishing that an ordinarily skilled artisan “‘would have combined LaCelle and Burns’ and ‘would recognize that the predictable result of the combination — a back paddle having an end that is curved like that of LaCelle — could have better coupling with the user’s finger.’” Id., at 17–18 (quoting Ex. 1019 ¶ 39 with added emphasis). The Federal Circuit also refocused our obviousness inquiry on “whether a person of ordinary skill in the art would have been motivated to combine Burns and LaCelle, not whether the combination would with absolute certainty result in the desired outcome.” Id. at 18. Dr. Rempel’s testimony cited by the Federal Circuit establishes that an ordinarily skilled artisan would have been motivated to apply the curved shape of LaCelle’s underside items to Burns’s elongate members. Our original Remand Decision failed to consider that testimony, and the Federal Circuit has identified that failure as error. Valve II, at 17. The argument proffered by Ironburg to rebut Dr. Rempel’s testimony is not supported by evidence. See Ironburg Remand Br. 23–24 (citing our Remand Decision but failing to cite evidence in support of Ironburg’s proffered argument).” slip op. at 24

  Patent outcomesUS 9,289,688 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,289,688
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentable
  PTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13

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

    “Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner

    “evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62

  Patent outcomesUS 11,336,832 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,336,832
• Google LLC v. Sandpiper CDN, LLCInstituted
  PTAB · Dec 1, 2025 · IPR2025-01010 · APJ Michael T Cygan · IPR · Institution

  The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.

  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) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–15 of the ’322 patent. Accordingly, we institute an inter partes review of the ’322 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. work or research experience in the field of content delivery management or networks,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 10 (citing Ex. 1003 ¶¶ 61–63). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 6

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

    “On the current record, we determine that the “modified embedded resource” may be a “link.” Both Petitioner and Patent Owner point to claim 13, which explicitly states that a modified embedded resource is a link. Because claim 13 depends from claim 1, claim 1 must be broad enough to encompass a modified embedded resource that is a link. Patent Owner also points to a statement in the ’322 patent that “[t]he embedded resource is a link.” Prelim. Resp. 18 (citing Ex. 1001, 4:26–31). Patent Owner argues that every embodiment of the ’322 patent “involves embedding the ‘modified embedded resource’ in another resource when it is returned to the client.” Paper 16, 2–3. Patent Owner cites to description in the ’322 patent of a “document” or a “page” returned to the requesting client. Id. (citing Ex. 1001, 4:42–48, 7:48–55). However, claim 15 does not return the modified embedded resource to the client, only the origin system. Claim 1 recites only that the “modified embedded resource” is returned to the client device with the content resource. Neither claim 1 nor claim 15 recite returning a document or a page containing the modified embedded resource, only the modified embedded resource itself. We acknowledge some tension with the adjective “embedded,” which Patent Owner argues requires that the embedded resource be embedded in something. Paper 16, 1–3. However, the clear description of an embedded patent, more strongly guides our preliminary construction.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “We are persuaded by Petitioner’s assertions for limitations [15pre]– [15a]. Dr. Mowry attests that Verna’s client browser sends a URL 28 to a content provider 22, which is then forwarded to broker 25, which selects the appropriate cache server to serve the content and returns a re-written URL to the content server that received the client request. Ex. 1003 ¶ 67 (citing Ex. 1005 ¶¶ 12, 26, 27, 37). On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API as acting as bridge establishing a connection between client and server. Ex. 2010 ¶ 50. Verma also meets Dr. Russ’s characterization of an API as “an interface that allows the client to communicate with an application executing on the server.” Ex. 2010 ¶ 50. Dr. Russ describers Verma’s broker as sending availability inquiries from the content provider (client) to servers 23 and 24 to “find out whether they currently store the requested movie file,” and provide that information back to the content provider (client). Id. ¶ 53. On the current record, this function of Verna’s broker fulfills Dr. Russ’s characterization of an API acting as an interface that allows the client to provides availability information to the broker). Consequently, we determine that Petitioner has shown Verma to disclose limitation [15a] for purposes of institution on the current record.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,057,322

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.