- Apple Inc. v. Memoryweb, LLCAll claims unpatentablePTAB · Jul 8, 2026 · PGR2022-00006 · APJ Jason M Repko · PGR · Remand
On remand, the Board held claims 1–59 unpatentable: claims 1–6, 8–37, 40–44, and 49–59 over A3UM under §103, and claims 6, 7, 38, and 39 for lack of written description under §112.
RulingsRemand decision- RemandOther
“On remand, the Board is to determine “[w]hether the alleged inconsistency in [Petitioner’s] treatment of map images compared to other first/second versions of claim elements supports rejecting [Petitioner’s] theory on claim-construction or other merits grounds is a matter for the Board to consider in the first instance on remand, constrained by any relevantly similar now-final findings of fact and conclusions of law in the ’020 PGR and related proceedings” (CAFC Dec. 16). Thus, the two issues on remand are (1) the construction of the second map image and (2) whether A3UM teaches or suggests the claimed “second map image” under that construction.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least one year of experience designing graphical user interfaces for applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision and Final Written Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12; FWD 30–31. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision and Final Written Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“c. Analysis We agree with Petitioner that the “second map image” should be construed as the map image in the second person view. Reply 5. Under Petitioner’s proposed construction, the terms “first” and “second” identify which person view that the map image is within. Id. The map image’s connection to the person view is important to how the user interacts with the interface because selecting the map image in one view does something different than selecting the map image in another, as recited in claims 14 and 46.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Here, we disagree with Patent Owner’s argument because it is based on the premise that the second map image is different from the first in a way that is not reflected in the claims. See Section II.C.3 supra. Even if “the claims consistently use the terms ‘first’ and ‘second’ to refer to separate and distinct elements,” A3UM’s first and second map images are separate and distinct elements for at least the reason they are included in separate and distinct views in the interface. See Pet. 63; Reply 5. As discussed in Section II.C.3, the second map image is the map image in the second person view. Here, Petitioner sufficiently shows that A3UM provides the same functionality for each person, including displaying the person in the Faces view with their name within A3UM’s overall user interface. See Pet. 62 (citing Ex. 1003, ¶215; Ex. 1005, 418–420). Patent Owner does not dispute this. See PO Resp.; Sur-reply. For the same reasons why A3UM teaches the “first map image” with respect to a first person view recited in claims 1 and 31, Petitioner has shown that A3UM also teaches the “second map image” in the second person view. See FWD 53–56. In sum, Patent Owner’s arguments are unpersuasive because they are based on an incorrect claim construction, and Petitioner has shown that claims 13 and 45 are unpatentable. 5. Claims 14–16 and 46–48 Apart from the arguments analyzed above, Patent Owner does not present separate arguments directed to the subject matter of claims 14–16 burden to show that the challenged claims are unpatentable. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). We have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them persuasive as they are consistent with and supported by the evidence of record. See Pet. 63–64. Thus, Petitioner has shown that claims 14–16 and 46–48 are unpatentable over A3UM.” slip op. at 14
Patent outcomesUS 11,017,020 unpatentableClaim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00926 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: the challenged claims were entitled to the ’454 application’s priority date, so the petition showed no reasonable likelihood of unpatentability.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 64–65.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
§ 112 disclosurePatents in suitUS 11,050,855 - Apple Inc. v. Memoryweb, LLCSome claims unpatentablePTAB · Jun 7, 2023 · PGR2022-00006 · APJ Jason M Repko · PGR · Final written decision
Claims 1–12, 17–44, and 49–59 are unpatentable over A3UM or for lack of written description; claims 13–16 and 45–48 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“2. Analysis A person is not entitled to a patent if their invention was “described in” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art in 2011 would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, and (2) at least applications such as photo management systems. Pet. 12 (citing Ex. 1003 ¶¶ 44–46). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 12. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. PO Resp. 7. We continue to find that the skill level identified by Petitioner (Pet. 12) is consistent with the record. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“e. Conclusion Petitioner provides articulated reasoning, supported by rational” slip op. at 68
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“11. Written Description: Claims 6, 7, 38, and 39 Petitioner asserts that claims 6, 7, 38, and 39 are unpatentable as lacking adequate written-description support. Pet. 91–93. Claim 6 recites, in part, “The method of claim 4, wherein, in the people view, the first name is displayed adjacent to the first digital file associated with the first thumbnail image and the second name is displayed recites similar limitations. See id. at 38:47–50. Claim 7 depends from claim 6, and claim 39 depends from claim 38. Id. at 35:63–65 (claim 7), 38:51–53 (claim 39). Petitioner asserts that claims 6 and 38 require that the “people view” includes at least the following: (i) “a first thumbnail image associated with a first person,” (ii) “a first name associated with the first person,” (iii) “a second thumbnail image associated with a second person,” (iv) “a second name associated with the second person,” and (v) a “first digital file associated with the first person.” Pet. 91. Petitioner argues that the ’020 patent lacks written-description support for a people view with these features. Id. at 92 (citing Ex. 1003 ¶ 315). Under Petitioner’s interpretation, digital files are “plainly distinct”” slip op. at 96
Patent outcomesUS 11,017,020 mixed§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,017,020 - PTAB · Jan 26, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Institution
Instituted IPR on claims 1–4, 6, and 9 on both grounds: anticipation by Chen359 and obviousness over Tanaka and Bareau.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Turning to the first part of the framework, there is no dispute that, although Chen359 is an ancestor to the ʼ397 patent, it was not previously presented to the Office in the context of determining patentability of the claims of the ʼ397 patent. Instead, Patent Owner argues that the Examiner issued the challenged claims without finding that they lack written description support from the Specification of the ’397 patent, and therefore, implicitly, also from the 2011 application. Prelim. Resp. 16 (citing Ex. 1002, 1213–17). A review of the prosecution history of the ’397 patent, however, shows that there were no arguments raised regarding written description support or whether any of the prior applications in the chain constituted prior art to the ʼ397 patent. Nor were there any arguments otherwise calling into question the priority date of the ʼ397 patent. And there certainly were no arguments made that Chen359 was prior art to the ʼ397 patent. The Examiner, therefore, did not analyze written description support in relation to these prior applications. We therefore conclude that, as to the first ground, the same or substantially the same art or arguments were not previously presented to the Office. Because we determine that the facts do not satisfy the first part of the Advanced Bionics framework, we need not address the second part of the framework.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Notably, Petitioner argues that “Sunny is not time-barred” from filing a Petition challenging the ʼ397 patent (Prelim. Reply 1) and Patent Owner does not dispute this contention. We thus find that for purposes of institution, we need not address whether Sunny is an unnamed real party-ininterest “because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential); see also Intel Corp. v. Alacritech, Inc., IPR2017-01391, Paper 8 at 3–6 (PTAB Nov. 28, 2017) (holding that the Board will not address the argument for purposes of institution that a litigation co-defendant should be a named a real party-ininterest in the absence of an allegation that the co-defendant would be time barred under section 315(b)). We find that this “approach better serves the interest of cost and efficiency.” SharkNinja, Paper 11 at 20; 37 C.F.R. § 42.1(b). Accordingly, we find that Patent Owner’s arguments concerning Sunny not being named as a real party-in-interest do not form a basis to deny institution under our circumstances.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one challenged claim of the ’397 patent. At this stage of the proceeding, however, we have not made a final determination with respect to the patentability of the challenged claims. VI. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–4, 6, and 9 of the ’397 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), inter partes review of the ’397 patent shall commence on the entry date of this Order, and notice is hereby given of the institution of a trial.” slip op. at 40
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to determine whether the 2011 application provides written description support for the claims of the ʼ397 patent, we look to see whether the specification of the 2011 application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter [of the challenged claims] as of the filing date [of the 2011 application].” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’” Id. at 1353–54 (quoting University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed. Cir. 2004)). Thus, whether the specification complies with the written description requirement calls for the comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. First, we look to the claims to determine their scope. Here we agree with Petitioner that independent claim 1 of the ʼ397 patent does not limit the first lens element to having a particular refractive power. The plain language of claim 1 recites “a first lens element” without specifying the lens as having a specific refractive power or any other configuration or characteristic. Ex. 1001, 31:65. Thus, we determine that the scope of claim 1 encompasses a first lens having either a positive or negative refractive power. Next, we look at the written description of the 2011 application. The Summary of the Invention section of the 2011 application repeatedly describes the invention as having “a first lens element with positive refractive power.” Ex. 1005, 2:10–11; see 2:22–23 (“the first lens element with a positive refractive power”); 3:9–11 (“the first lens element with the positive power provides partial refractive power needed by the optical imaging system and reduces the total optical length.”). The Detailed Description of the Preferred Embodiments likewise describes a “first lens element 110 with a positive refractive power.” Id. at 7:13. Each of the eight embodiments and associated figures show the first lens as having a positive refractive power. Id. at 18:2, 21:2, 24:2, 27:2, 30:2, 33:2, 36:2, Tables 1-2, 2-2, 3-2, 4-2, 5-2, 6-2, 7-2, 8-2, Figs. 1A, 2A, 3A, 4A, 5A, 6A, 7A, 8A.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,564,397 - Apple Inc. v. Memoryweb, LLCInstitutedPTAB · Jun 10, 2022 · PGR2022-00006 · APJ Jason M Repko · PGR · Institution
The Board instituted PGR of claims 1–59 on all grounds, finding claim 1 more likely than not obvious over A3UM.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of post-grant review requires that the petition, if not rebutted, demonstrate that it is more likely than not that at least one challenged claim is unpatentable. 35 U.S.C. § 324(a). Applying that standard, we institute a post-grant review.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). At this stage and on the current record, we also disagree with Patent Owner’s argument that the manual was not publicly accessible. See Prelim. Resp. 20– 25; Sur-reply 4–5. Rather, we preliminarily determine for institution that the declaration of Matthew Birdsell (Ex. 1020) sufficiently supports Petitioner’s assertions on this issue. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“For example, we preliminarily agree that “A3UM’s Viewer and Browser interfaces also both use a gallery design, where a row of items is displayed above a larger viewer interface displaying one item in greater detail.” Id. at 33 (citing Ex. 1003 ¶ 129). Also, like the Browser’s Grid view, the Faces browser displays a grid of thumbnail images. See id. at 34 (citing Ex. 1005, 80, 216). Considering these teachings, we preliminarily agree that “A3UM’s disclosure of both Grid and Filmstrip (+Viewer) options for the own benefits, and implementing an interface using one or the other would have involved only routine skill.” Id. at 34–35 (citing Ex. 1003 ¶ 131). At this stage and on this record, Petitioner also sufficiently shows that one of ordinary skill in the art “would have been motivated to modify the Faces browser to adopt a Viewer/Browser arrangement that displays selected images ‘at full size.’” Id. at 35. For example, Petitioner asserts that the proposed modification would benefit users of the Viewer, allowing them to “(1) ‘examine an image at its full size’; (2) ‘apply adjustments, keywords, and metadata to an image in the Viewer’; (3) customize how images are displayed, such as ‘at full resolution’ and with ‘metadata,’ and (4) use the Loupe tool, i.e., a magnifying glass.” Id. (citing Ex. 1005, 51, 260, 266; Ex. 1003 ¶ 132). According to the Petition, “Doing so could improve the usability of A3UM’s face confirmation process for detected yet unconfirmed faces by allowing the user to review unconfirmed images ‘at full size’ before confirming them.” Id. (citing Ex. 1003 ¶ 133; Ex. 1005, 419–420, 424–425). Thus, at this stage and for institution, we preliminarily determine that Petitioner has sufficiently shown that the subject matter recited in the person-view limitations would have been obvious.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Instituted
“The test for written-description sufficiency “is whether the specification ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of [the relevant time].’” In re Glob. IP Holdings LLC, 927 F.3d 1373, 1377 (Fed. Cir. 2019) (quoting Ariad, 598 F.3d at 1351). Here, the Petition relies on Dr. Terveen’s analysis of how a skilled artisan would have viewed Figure 6. Pet. 92 (citing Ex. 1003 ¶ 316). Dr. Terveen explains that Figure 6 contains multiple copies of the same person-name combination. Ex. 1003 ¶ 316. In Dr. Terveen’s view, these repeated thumbnails would not be simultaneously the claimed first thumbnail and first digital file, “which a skilled artisan would understand to mean they are not the same.” Id. Dr. Terveen asserts that there is no association between the duplicated thumbnails. Id. In at least this way, we preliminarily determine that the Petition’s written-description challenge conveyed to those skilled in the art.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,017,020 - Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentablePTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56
Patent outcomesUS 10,445,966 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,445,966
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.