• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• Axon Enterprise, Inc. / Dedrone Holdings, Inc. v. Airspace Defense, Inc.Other
  PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision

  Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.

  RulingsFinal written decision

  • 112 supportMotion to amend, deniedDenied

    “First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15

  • ScopeDecided for patent owner

    “not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23

  § 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,713,959
• Microsoft Corporation v. Throughputer, Inc.Institution denied
  PTAB · Oct 11, 2022 · IPR2022-00758 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution on claims 1–23 because Sandstrom-1 was not prior art in light of the patent’s priority date, so Petitioner did not meet the institution threshold.

  RulingsInstitution decision

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

    “information presented in the petition . . . 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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’242 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Office was satisfied that the ’731 application, which had issued as the ’953 patent, properly claimed priority to the preceding applications in the 2012 line, and that all intermediate applications also included proper priority claims. It thus follows that, absent any defects in the priority claims of the subsequent applications, including the application that issued as the ’242 patent, the remedial steps taken by the applicant and approved by the Office during prosecution and post-issuance of the ’953 patent also render proper the priority claims of the subsequent applications. Petitioner has not persuasively pointed us to any additional defects not addressed previously by the Office in the priority chain of the ’242 patent in the 2012 line. Nor has Petitioner identified legal authority for the Board to revisit the January 2021 Decision’s finding that the priority claims of the ’731 application met the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he reference as set forth in the [second corrected ADS] filed March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2) and 1.78(a)(3).”).” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “For these reasons, Petitioner has not persuaded us that there is a break in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

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

    “in the priority chain of the ’242 patent in the 2012 line. As such, we find that the ’242 patent is entitled to a priority date at least as early as June 8, 2012. See Ex. 1001, code (60). Accordingly, we determine that Sandstrom-1 does not qualify prior art under pre-AIA 35 U.S.C. § 102(a) or (b) because Sandstrom-1’s publication date of May 29, 2014, is after the June 8, 2012, priority date from the 2012 line.6 Ex. 1001, code (60); Ex. 1004, code (43).” slip op. at 22

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,430,242
• PNC Bank N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Mar 7, 2022 · IPR2021-01399 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Oakes I, Oakes II, Medina, and Roach qualify as prior art to claims 1–29.

  RulingsInstitution decision

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

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina. IV. CONCLUSION In view of Patent Owner’s Preliminary Response, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Petitioner would prevail in challenging any one of claims 1–29 of the ’605 Patent as unpatentable.” slip op. at 28

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “important to the invention is that the image capture device and general purpose computer are communicatively coupled, not their locations relative to one another. See, e.g., id. ¶ 33; accord Prelim. Resp. 32–33. In addition, the ’974 Application does not limit its invention to only those remote deposits performed using a general purpose computer that is separate from an image capture device.10 The ’974 Application broadly describes the image capture device, noting it can be “a scanner or digital camera.” Ex. 1042 ¶¶ 21, 33. The ’974 Application also indicates that the general purpose computer and image capture device are “customer-controlled” and “electronics that today’s consumers actually own or can easily acquire.” Id. ¶¶ 21, 29, 33; see also id. ¶ 19. In light of these disclosures, we find that a person of ordinary skill in the art would have understood the ’974 Application to reasonably convey possession of both integrated and non-integrated configurations. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (explaining that claims with the generic step of “adheringly applying” one layer to an adjacent layer satisfied the written description requirement because “one skilled in the art who read [the] specification would understand that it is unimportant how the layers are adhered, so long as they are adhered”).” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28

  • Obviousness (§103) › Analogous artNot reached

    “transmitted copy of the electronic images is a modified version of the electronic images captured with the digital camera, the modified version having a different electronic format than the images captured with the digital camera” recited in claim 1, and similarly recited in claim 25. As explained above, we are not persuaded by Petitioner’s arguments regarding these limitations. As a result, we determine that Petitioner has not shown a reasonable likelihood that it would establish that Oakes I, Oakes II, Medina, and Roach qualify as prior art to the challenged claims of the ’605 Patent. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail on its following assertions: (1) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I and Oakes II; (2) claims 12–23 and 26–29 are unpatentable as obvious over Oakes I, Oakes II, and Medina; (3) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, and Roach; and (4) claims 1–11, 24 and 25 are unpatentable as obvious over Oakes I, Oakes II, Roach, and Medina.” slip op. at 28

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,013,605
• PNC Bank N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Mar 2, 2022 · IPR2021-01381 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because PNC did not show that Oakes, Medina, or Roach qualified as prior art, so it failed to establish a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “Although USAA takes issue with PNC’s approach to claim construction for purposes of this proceeding, it does not appear that USAA disputes PNC’s position that we should apply the constructions for the claim terms “mobile device,” “portable device,” and “digital camera” that USAA proposed in the district court and, eventually, the district court adopted. Compare Ex. 1028, 15, with Ex. 1054, 20. Because there is no dispute between the parties as to the construction of these three claim terms, we need not construe them for purposes of this Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “2. Level of Skill in the Art There is sufficient evidence in the current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Noble, PNC argues the following: [a] person of ordinary skill in the relevant field of art . . . at the relevant time (2006–2017) of the ’681 patent would have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent field, and two years of experience in software development and programming in the area of image capturing/scanning technology involving transferring and processing of image data to and at a server. Less work experience may be compensated by a higher level of education, and vice versa. Pet. 10 (citing Ex. 1002 ¶¶ 37, 38). In response, USAA states that, “[f]or the purposes of [its] Preliminary Response only, USAA applies the level of skill in the art proposed by [PNC].” Prelim. Resp. 21. To the extent necessary, and for purposes of this Decision, we adopt PNC’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Noble and it is consistent with the ’681 patent.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “conclusion PNC asks us to draw from them. In particular, PNC appears to contend that we should find that the ’247 application does not provide sufficient written description support for the device limitations merely because the scope of the independent claims encompass a configuration that is not described expressly in that document. See Pet. 16, 18–19. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“[A]n applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon, 93 F.3d 1582 n.7 (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); In re Smythe, 480 F.2d 1376, 1382 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the [written] description requirement in section 112.”). We acknowledge that there are situations where a claim’s breadth results in a lack of written description support, but PNC fails to show that such a situation is present here. In its argument, PNC primarily relies on Reckitt, but this case is unavailing. See Pet. 13–15, 19, 32 (citing Reckitt Benckiser LLC v. Ansell Healthcare Prods. LLC, IPR2017-00063, Paper 38 (PTAB Jan. 30, 2018)). First, Reckitt is a non-precedential Board decision that is not binding on this panel.5 Second, and perhaps more importantly, the case is readily distinguishable on its facts. See Prelim. Resp. 30–31 (distinguishing Reckitt from the circumstances presented here). In particular, in Reckitt, the Board panel found that claims lacking a pre-vulcanization requirement lacked written description support in the priority document, noting that “[p]re-vulcanization [was] not some ancillary feature but rather the very heart of the invention.” Reckitt, IPR2017-00063, Paper 38 at 12, 14–15 (emphasis added). However, “[PNC] identifies nothing whatsoever in the ’247 application suggesting that it is important— much less the ‘very heart of the invention’—that the described image capture device be in a housing entirely separate from the described general purpose computer.” Prelim. Resp. 31. In fact, the Petition identifies (and we perceive) no reason why the relative location of the general purpose computer (i.e., the portable/mobile device) and the image capture device” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We have considered Dr. Noble’s supporting testimony, but it suffers from the same deficiencies as PNC’s arguments. See Ex. 1002 ¶¶ 42–58. Moreover, in our view, Dr. Noble does not explain sufficiently his conclusions regarding what a person of ordinary skill would have understood the inventor of the ’247 application to possess (or not possess) and, accordingly, we assign little weight to his testimony on this particular issue. E.g., id. ¶¶ 46, 54–57; see TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1358 (Fed. Cir. 2019) (“Conclusory expert testimony does not qualify as substantial evidence.”).” slip op. at 25

  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 10,013,681
• Offshore Technical Compliance, LLC v. Innovative Pressure Testing, LLCAll claims unpatentable
  PTAB · Oct 28, 2021 · IPR2020-00923 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–17 were held unpatentable as obvious over BOP California, Wodjenski, and Winters; the revised motion to amend proposing claims 19–35 was denied.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “1 The Petition requested review of claims 1–18, but Patent Owner filed a statutory disclaimer of claim 18. Pet. 3; Ex. 2001; see 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”); Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1372 (Fed. Cir. 2018). claims on which we instituted trial. Based on the record before us, Petitioner has shown, by a preponderance of the evidence, that (1) claims 1–17 of the ’143 patent are unpatentable; and (2) Patent Owner’s proposed substitute claims 19–35 are unpatentable.” slip op. at 2

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “B. Testimony of Mr. Anderson Patent Owner contends that the testimony provided by Petitioner’s” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 18

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

    “D. Claim Construction The Board uses “the same claim construction standard that would be” slip op. at 21

  Patent outcomesUS 9,207,143 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,207,143
• Canon Inc. / Canon U.S.A., Inc. v. Hidehiko NakajimaAll claims unpatentable
  PTAB · Mar 5, 2020 · PGR2018-00090 · APJ John P Pinkerton · PGR · Final written decision

  Claims 1–6 are unpatentable under § 112(a) for lack of written description and under the stated § 103 combinations; the § 112(b) indefiniteness challenge was not proven.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “E. Level of Skill in the Art Petitioner contends that a person of ordinary skill in the art at the time of the ’625 patent would have had a bachelor’s degree in optical engineering, mechanical engineering, electrical engineering, optics or physics, with at least three years of experience working in optical engineering, a master’s degree in one of the above disciplines with at least two years of experience working in optical engineering, a Ph.D. in one of the above disciplines focusing on optical engineering, or other equivalent experience. Pet. 35 (citing Ex. 1002 ¶ 48). In the Institution Decision, we adopted Petitioner’s proposed description of the level of ordinary skill in the art. Dec. on Inst. 11. Patent Owner did not file a Patent Owner Response and, therefore, has not expressed a position on the level of ordinary skill in the art. Based on the subject matter at issue and the prior art of record, we adopt Petitioner’s proposal and apply this level of ordinary skill in the art for purposes of this Final Written Decision.” slip op. at 10

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

    “Petitioner contends that we should construe the following terms or phrases: (1) “mechanical control”; (2) “a mechanism separate from the rotation and the selector”; and (3) “wherein the rotary switch is configured to rotate without exerting mechanical control over a mechanism separate 11 The claim construction standard recently changed for all post-grant proceedings filed on or after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018). Because the Petition in this proceeding was filed on August 6, 2018, however, the applicable claim construction standard remains the “broadest reasonable construction,” as set forth in 37 C.F.R. § 42.200(b) (2018). from the rotation and the selector switch.” Pet. 11–15. Petitioner asserts that all other claim terms need not be construed and should be given their ordinary and customary meaning, as understood by a person of ordinary skill in the art. Id. at 10. We agree with Petitioner and, therefore, we construe below the terms and phrases identified by Petitioner. We also determine that no express interpretation of any other claim term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

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

    “mean ‘directing influence over’ when used to describe an act, such as in ‘exerting . . . control’ here.” Pet. 11 (citing Ex. 1018, 3; Ex. 1002 ¶ 54). Petitioner further contends that, although the ’625 patent’s Specification does not discuss “mechanical control” at all, it does use the word “control” to describe acts in a manner consistent with this meaning. Id. at 11–12 (citing Ex. 1001, 2:58–60 (“[T]he digital camera system controls the discrete function or the continuous function corresponding to the output.”), 7:19–21). Thus, Petitioner argues that the term “mechanical control,” as used in the ’625 patent, means “physically engaging to direct influence over.” Id. at 12 (citing Ex. 1002 ¶ 55). We agree with Petitioner that, outside of independent claim 1, the composite term “mechanical control” is not used in the ’625 patent’s Specification. Regarding Petitioner’s proposed construction of “physically engaging to direct influence over,” we note that neither the Specification nor Petitioner’s definition of “control” requires or suggests “engaging.” Considering the claim terms “mechanical” and “control” in light of the Specification, the definition of “mechanical,” Petitioner’s arguments, and Petitioner’s dictionary definition of “control,” we maintain our construction from the Institution Decision and we conclude that the broadest reasonable interpretation of the term “mechanical control” is “physical influence over.” Dec. to Inst. 16.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateUnpatentable

    “Based on the record, we determine Petitioner has demonstrated, by a preponderance of the evidence, that the “wherein clause” limitation lacks written description support in the Prior Applications and the ’625 patent’s Specification. First, as explained in our claim construction analysis above, we are persuaded by Petitioner’s argument that the limitation “wherein the rotary switch is configured to rotate without exerting mechanical control over a mechanism separate from the rotation and the selector switch” is a negative limitation. See supra Section II.C.3. We have construed the limitation to mean that the rotary switch “is configured to rotate so as not to exert physical influence over a component that is not part of (1) the rotary switch, or the ball bearing between the rotary switch and camera chassis, and (2) the selector switch and its parts.” We are persuaded that this is a negative limitation because it excludes rotary switches configured to exert physical influence over any physical component other than the rotary switch and ball bearing with which it rotates, as well as the selector switch and its parts.” slip op. at 22

  Patent outcomesUS 9,813,625 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham · Nautilus
  Patents in suitUS 9,813,625
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01822 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1023 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1023 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1023 ¶ 103).” slip op. at 6

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

    “Petitioner’s combination of Dobrovolny and Krauss results in Petitioner improperly reading one component of Dobrovolny on two different claimed structures. Petitioner does not explain adequately why it would have been obvious to one of ordinary skill in the art to use Dobrovolny in the Q path of Krauss’s IQ modulator.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Absent a cogent explanation, it appears that Petitioner has engaged in impermissible hindsight reconstruction. See Grain Processing Corp. v. Am.- Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. 1983)) (“Care must be taken to avoid hindsight reconstruction by using ‘the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’). We, therefore, are not persuaded that Petitioner adequately explains why the limitations at issue in independent claim 99 would have been obvious over the combined teachings of Dobrovolny and Krauss.” slip op. at 17

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Qualcomm Inc. / Qualcomm Atheros, Inc. v. Parkervision Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01819 · APJ Michael R Zecher · IPR · Institution

  The Board denied institution because Qualcomm did not show a reasonable likelihood that claims 88–92 and 107–110 were unpatentable under § 103(a).

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Taking into account the arguments presented in ParkerVision’s Preliminary Response, we conclude that the information presented in the Petition does not establish that there is a reasonable likelihood that Qualcomm will prevail in challenging claims 88– 92 and 107–110 of the ’372 patent as unpatentable under 35 U.S.C. § 103(a). We, therefore, deny the Petition.” slip op. at 2

  • BurdenDenied

    “An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11

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

    “On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny and Maas. We understand Qualcomm to argue that modifying Dobrovolny’s RF mixer to transmit a harmonic frequency instead of the fundamental frequency is nothing more than a design choice. See Pet. 41–42. This argument, by itself, does not explain why modifying Dobrovolny in the manner proposed by Qualcomm would have been obvious. See Cutsforth, Inc. v. MotivePower, Inc., No. 2015-1316, 2016 WL 279984, at *3 (Fed. Cir. Jan. 22, 2016) (non-precedential) (“Merely stating that a particular placement of an element is a design choice does not make it obvious. [There must be] a reason for why a person of ordinary skill in the art would have made the specific design choice.”). Qualcomm does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of the fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Absent such an explanation, we are not persuaded that Qualcomm adequately explains why independent claim 88 would have been obvious over the combined teachings of Dobrovolny and Maas. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Maas because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 41–42, with Ex. 1025 ¶ 174. For instance, Dr. Larson testifies that: [t]o the extent it is unclear whether Dobrovolny discloses that a desired harmonic is included in the multiplicity of harmonics in waveform C, Maas discloses that the choice to transmit at a harmonic frequency instead of the fundamental frequency was a known design alternative that would have been obvious to one of ordinary skill in the art, as I discussed in Section V above. Ex. 1025 ¶ 174. Similar to our analysis above, Dr. Larson does not offer a sufficient or credible explanation as to why one of ordinary skill in the art would have made the specific design choice of transmitting a harmonic frequency instead of a fundamental frequency to Dobrovolny’s RF mixer in order to account for a desired harmonic, as required by independent claim 88. Moreover, we note that “Section V” of Dr. Larson’s Declaration, referred to in the block quote above, spans forty-six (46) pages or sixty-nine (69) paragraphs. See Ex. 1025 ¶¶ 31–100. In essence, Dr. Larson asks that we search the sixty-nine paragraphs of testimony in Section V to unearth support for his conclusory statement in the passage quoted above. This we will not do. If a party or witness wishes for us to consider one portion of a document as supporting statements made in another portion, it must provide citations to those portions with particularity.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for patent owner

    “On the present record, we are not persuaded that Qualcomm has articulated a sufficient rationale to combine the teachings of Dobrovolny, Maas, and Thodesen. With respect to Qualcomm’s assertion that the teachings of Dobrovolny and Thodesen are capable of being combined because both of these references teach the same structure and recognize the same problem, this assertion, at best, indicates that Dobrovolny and Thodesen are analogous art to each other. Merely asserting that these prior art references are analogous art to each other, however, does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418. We also are not persuaded by the cited testimony of Dr. Larson that purportedly supports Qualcomm’s rationale to combine the teachings of Dobrovolny and Thodesen because it essentially repeats the arguments advanced by Qualcomm in its Petition. Compare Pet. 42, with Ex. 1025 ¶ 173. For instance, Dr. Larson testifies that: [f]or example, it would have been obvious to a person of ordinary skill in the art to combine Dobrovolny with Thodesen’s summer because both references teach the same architecture of a switch where one input of each switch is coupled to AC ground and [both references] recognize the need to sum the signals generated by the switch . . . . Thus, a person of ordinary skill in the art using Dobrovolny’s circuitry would have been motivated to combine it with any similar device that would sum the voltages of the inputted signals, including the summer disclosed in Thodesen. Ex. 1025 ¶ 173. Similar to our explanation above, simply demonstrating that Dobrovolny and Thodesen are analogous art to each other does not suffice as an articulated reason with a rational underpinning to combine their respective teachings—more is required to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372
• Qualcomm, Inc. / Qualcomm Atheros, Inc. v. Parkervision, Inc.Institution denied
  PTAB · Mar 8, 2016 · IPR2015-01825 · APJ Jason J Chung · IPR · Institution

  The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that the information presented in the Petition does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we deny institution of inter partes review of all the challenged claims.” slip op. at 2

  • Skill levelOther

    “whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit,” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. We analyze the asserted grounds with the principles identified above in mind.” slip op. at 11

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

    “reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84 U.S.LW. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest reasonable interpretation standard, and absent any special definitions, claim terms or phrases are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art, in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In its Petition, Petitioner proposes constructions for the following claim phrases or terms: (1) “inversion means for inverting the [] information signal and outputting a [] inverted information signal” (claims 99 and 100); (2) “gating [a signal]” (claims 99, 100, 126, and 127); (3) “first [second/third/fourth] gating means for gating” (claims 99 and 100); (4) “harmonically rich signal” (claims 99, 100, 126, and 127); (5) “harmonic” (claims 99 and 100); and (6) “summing means” (claims 99 and 100). Pet. 12–18. In response, Patent Owner proposes a construction for each of the claim phrases or terms identified by Petitioner. Prelim. Resp. 11–20. We, however, need not assess the parties’ proposed constructions because they are not necessary to resolve the dispositive issues discussed below. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “entitled to claim benefit to the priority date of the ’940 patent—namely, October 21, 1998. See Pet. 11. Specifically, Petitioner contends the challenged claims cannot be entitled to a filing date earlier than April 13, 2000—the filing date of the application that led to the ’372 patent—because, according to the Declaration of Dr. Lawrence E. Larson, none of the earlier filed applications disclose “inversion means” or “‘inverting’ the ‘information signal’” as recited in the challenged claims. Id. (citing Ex. 1025 ¶ 103). Dr. Larson’s testimony merely repeats Petitioner’s assertion and provides no additional explanation or evidence with respect to this issue. Ex. 1025 ¶ 103. Other than “inversion means” or “‘inverting’ the ‘information signal,’” Petitioner does not advance arguments pertaining to other limitations regarding priority. Pet. 11 (citing Ex. 1025 ¶ 103). In response, Patent Owner argues that the specification of the ’940 patent, which is a parent patent to the ’372 patent, describes inverters 3910 and 4010. Prelim. Resp. 3–4 (citing Ex. 1016, 45:25–46:25, Figs. 39 and 40). For convenience, Figures 39A and 40A of the ’940 patent are reproduced below. Figures 39A and 40A of the ’940 patent illustrate inverters 3910 and 4010 inverting, respectively, waveforms 3902 and 4002. On this record before us, we are not persuaded Petitioner has demonstrated facts sufficient to establish a reasonable likelihood that it will prove that the challenged claims of the ’372 patent lack sufficient written description support. Specifically, Petitioner does not explain why the disclosure of inverters 3910 and 4010 would not convey to the person of ordinary skill in the art that the inventors were in possession of “inversion means” at the time the application that led to the ’940 patent was filed. Based on the current record, the challenged claims, therefore, are entitled to claim the benefit of the priority date of the ’940 patent—namely, October 21, 1998.” slip op. at 6

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,039,372

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.