- Shenzhen Tuozhu Technology Co. Ltd. v. Stratasys, Inc.Institution deniedPTAB · Oct 6, 2025 · IPR2025-00585 · APJ Lilan Ren · IPR · Institution
The Board denied institution on claims 1–6, 10–19 because claim 1’s scope is ambiguous and 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. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the scope of claim 1 is ambiguous and that there is not a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we deny inter partes review.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“distinguishes and contrasts build material property from operational parameters. The diagnostic test passage therefore only describes a diagnostic test of the build material property but does not describe a subsequent diagnostic test to assess whether an operational parameter is suitable for the printer. Based solely on the diagnostic test passage and the prosecution history, a possible interpretation may be that the operational parameter determination in claim element 1b encompasses the diagnostic testing in claim element 1c. That is, “performing a diagnostic test to determine whether the operational parameter is suitable for the three-dimensional printer” in claim element 1c is subsumed as part of “determining an operational parameter of a fabrication process using the three-dimensional printer based upon the data, the operational parameter including at least one of a build platform temperature, a build volume temperature, an infill requirement, a rafting requirement, a support structure requirement, and a cooling requirement” in claim element 1b.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72 (Fed. Cir. 2010) (holding that claims of the later-filed application, which were not limited to a “blue noise mask,” were “not entitled to claim the benefit of their parent applications’ filing dates”); ICU Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009) (holding that “spikeless” claims “added years later during prosecution” were not supported by the specification which “describe[d] only medical valves with spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir. 1998) (holding the generic shaped cup claims of the later-filed child application were not entitled to the filing date of the parent application that “disclosed only a trapezoidal cup and nothing more”). “To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” PowerOasis, 522 F.3d at 1306 (emphasis omitted; alteration in original). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art in the field in the relevant time frame would have had “(1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶ 20). Petitioner also contends that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. (citing the same). Patent Owner contends that an ordinarily skilled artisan “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 12. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it appears unopposed and consistent with the disclosures of the ’464 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,167,464 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - Apple Inc. v. Rfcyber Corp.All claims unpatentablePTAB · Jan 19, 2024 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over Buhot, GPC, and Zhu.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “‘It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.’” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession of the claimed subject matter at the time of the earlier-filed application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 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.” Id. We agree with Petitioner there does not appear to be support for limitation [1(j)] in the ’653 application. We find that the disclosure of the ’653 application—limited to general teachings of a smart card, an operating system, and a smart card manager—is insufficient to show possession of limitation [1(j)]. See Ex. 2001 (’218 patent), 4:47–56. As we explained above, “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood, 107 F.3d at 1571−72. The ’653 Application contains no disclosure of replacing applications, even if the disclosure might render such replacing obvious, it is not sufficient to show the possession required to establish entitlement to a priority date. Accordingly, we agree with Petitioner that the challenged claims of the ’724 patent are entitled to a priority date no earlier than March 4, 2012.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that “[t]he parties agree on the level of skill in the art.” PO Resp. 11. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that it applies “the plain and ordinary meaning as understood by a [person of ordinary skill in the art] for all terms not expressly construed below,” and indicates that in parallel District Court litigation, the parties agreed to claim construction for the term “emulator device” to mean “hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.” Pet. 8. Petitioner proposes that the term “application” should be construed to mean “‘software program suitable for being executed on a portable device,’” but that the “distinction between the parties’ respective proposals need not be resolved for this proceeding.” Id. at 8–9. Petitioner finally contends that the phrase “a portion of or in entirety” in each independent claim means “in its entirety or partially,” but not both. Id. at 9. Patent Owner submits that “[t]he parties agree that the Board should construe ‘emulator device’ as ‘hardware device, alone or containing software, that pretends to be another particular device or program that other components expect to interact with.’” PO Resp. 11. Patent Owner “does not believe that any other terms require construction to resolve the issues presented in this proceeding.” Id. We apply the agreed upon constructions above, but otherwise find that no express constructions are necessary for this decision.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We agree with Petitioner that, even if the applications were stored in “generic memory” as Patent Owner contends, Zhu provides adequate security and would not undermine Petitioner’s motivation to combine. See Intel, 61 F.4th at 1380 (“It’s not necessary to show that a combination is the best option, only that it be a suitable option.”). Indeed, Zhu addresses the problem Patent Owner contends it would cause in the combination.3 As Zhu 3 Patent Owner argues that Petitioner should be precluded from discussing Zhu’s encryption embodiment because it was not raised in the Petition. See Sur-Reply 6–7. We disagree. The claims do not recite anything about how the data should be stored. Thus, it is not surprising that the Petition did not address it. Patent Owner raised the teaching away argument regarding the security of the data. See PO Resp. 12–16. Petitioner relies on the exact same mapping, same motivation, and same arguments why Zhu accounted for certain limitations. See Reply 4–11. Petitioner’s Reply merely explained that Zhu did address the problem Patent Owner contended would “teach away” from the combination. Indeed, Patent Owner was aware of Zhu’s teachings and addressed them in their Patent Owner Response. The Federal recognizes, “[l]oading one of the smart card applications already resident on the smart card to another memory location on the mobile device can provide sufficient memory for the selected smart card application, but can also create a security problem.” Ex. 1006 (Zhu), 3:25–34. To address this problem, Zhu proposes encrypting these applications in generic memory which “reduces the possibility of unauthorized access to the information.” Id. at 3:59–61, 8:30–55, 9:28–33; Ex. 1033 (Smith Supp. Decl.) ¶¶ 5–6. Although acknowledging this disclosure, Patent Owner’s expert, Dr. Weaver, testifies that Zhu’s encryption is inadequate and that encryption would have certain drawbacks. See Ex. 2002 (Weaver Decl.) ¶ 69. We find this testimony, which directly contradicts the teachings of Zhu that encryption is an adequate solution, lacks sufficient support to be entitled to much weight. Dr. Weaver provides no citations to support his contention that a person of ordinary skill at the time of the invention would find encryption so inadequate or problematic as he now contends. Moreover, we find that Dr. Weaver’s testimony on cross examination provides an additional, independent basis to give this testimony little weight. On cross examination, Dr. Weaver contended that there was nothing uniquely inadequate about the particular encryption scheme disclosed in Zhu, but rather that his “opinion was more general, that encryption schemes known in the 2012 time frame were all breakable with computing power and time,” and thus, inadequate Circuit has explained that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018). That is the case here, so we find that Petitioner’s arguments and evidence regarding Zhu’s encryption are proper. for storing payment applications in a mobile device’s general memory. Ex. 1027 (Weaver Tr.), 26:11–23; see also id. at 23:3–8 (“[D]oes encryption ever provide a sufficiently high security to permit storing payment application on a mobile device’s general memory? A. No”); 24:15–25:23 (testifying all publicly known encryption schemes in 2012 were breakable). However, when confronted with the fact that the ’724 patent discloses storing payment application on general baseband memory using an encryption method that was breakable, id. at 26:24–29:7, Dr. Weaver testified that this encryption method was sufficient to allow storing payment applications in general baseband memory even though it was “not perfectly secure,” id. at 29:8–14. Dr. Weaver provides no explanation or rationale why the encryption method in the ’724 patent, which he admits suffers from the same drawbacks he identified with respect to Zhu, is sufficient, but other encryption methods would not be sufficient. In its Sur-reply, Patent Owner attempts to rehabilitate Dr. Weaver’s testimony with justifications and qualifications not found in his original testimony. Sur-Reply 7–8. Yet, Dr. Weaver’s testimony discussed above was clear and unequivocal. See Ex. 1027 (Weaver Tr.), 24:15–29:14. Patent Owner made no effort to redirect his testimony at his deposition, so it cannot now do so through mere attorney argument. We find the inconsistency between Dr. Weaver’s treatment of Zhu and his treatment of similar disclosure in the ’724 patent exposes the insufficient reasoning supporting his opinions regarding the adequacy of Zhu’s use of encryption in the combination. Accordingly, we give no weight to his testimony that a skilled artisan would not have combined Zhu with a Buhot/GPC system due to security concerns. In contrast, we find the testimony of Mr. Smith regarding the use of encryption and the tradeoffs with the benefits of adopting Zhu’s memory management technique, which he offers in his Supplemental Declaration, to be well-reasoned, consistent with the disclosure of Zhu and the ’724 patent4, and entitled to substantial weight. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. As Petitioner recognizes, “‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’” Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). As Mr. Smith and Dr. Weaver testified, decryption without access to the security keys is an extremely computationally intensive and time-consuming process. Ex. 1033 (Smith Supp. Decl.) ¶¶ 6–8; Ex. 1027 (Weaver Tr.), 23:17–25:2; see also Ex. 10175, 132. Mr. Smith testifies that the benefits of using encryption would be sufficient to resolve the security concerns Patent Owner raises, and that any burden of generating a certificate would be outweighed by the benefits of using encryption and the memory advantages Zhu’s technique would offer. See Ex. 1033 (Smith Supp. Decl.) ¶¶ 4–15. Accordingly, we find that Patent Owner’s security concerns would be” slip op. at 25
Patent outcomesUS 11,018,724 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,018,724 - PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 10,803,435 - Twitter, Inc. v. Palo Alto Research Center LLCAll claims unpatentablePTAB · Mar 22, 2023 · IPR2021-01430 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–5, 7–11, 13–17, 19, and 20 are unpatentable under § 103; PARC’s contingent motion to amend is denied because the proposed substitute claims lack written-description support and are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Relying on Dr. Turnbull’s testimony, Twitter argues that a person of ordinary skill in the art “would at minimum have a bachelor’s in software, computer, or electrical engineering or computer science with at least two years’ experience in software development, including with respect to context-aware devices and systems, or the equivalent.” Pet. 16 (citing Ex. 1003 ¶ 24). Also, “[a]dditional graduate education could substitute for professional experience, or significant experience in electronic messaging could substitute for formal education.” Id. (citing Ex. 1003 ¶ 24). For this proceeding, PARC does not dispute this proposed level of ordinary skill. PO Resp. 21. Because Twitter’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence and appears consistent with the types of problems and solutions in the ’439 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:4–33 (“Background” section of the ’439 patent, describing the field and related art as relating to the use of contextual data in computer systems).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree as to Twitter’s last point, as we discuss below, that Cheng teaches a graph-based model that stores data in memory on a per-user basis. See infra Section IV.C.4(a); Ex. 1005, Fig. 7. Moreover, this decision does not address grounds of the Petition that omit Cheng as a reference, Cheng discloses a “context graph” under either party’s construction. Thus, we need not construe the term for this decision. See Nidec, 868 F.3d at 1017. Because the terms “recommender” and “application event data and/or operating system data” are not contested and are not material to our decision, we do not construe these two terms. 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))). To the extent that other claim terms are significant, we discuss them below in the context of the asserted prior art.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“We determine that Twitter has persuasively, and with sufficient specificity, shown that the combination of Huomo and Cheng teaches all aspects of limitation 13[d], and that it would have been obvious to modify Huomo by using Cheng’s personal interest graph as the model for how facts and assertions are stored in Huomo’s “blackboard.” This modification would have been compatible with Huomo and would simply affect the form of the information, or types of information, that are stored in Huomo’s blackboard. See Intel Corp., v. PACT XPP Schweiz AG, No. 2022-1037 at 10–13 (Fed. Cir. Mar. 13, 2023) (there is motivation to combine where one reference addresses a problem in one way, and another reference addresses the same problem in an alternative way that would be a suitable option). We agree with Twitter that this modification would have been within the ordinary skill in the art, that there would have been a reasonable expectation of success, and that an ordinarily skilled artisan would have recognized benefits to using Cheng’s graph-based structure such as the ability to better track social relationships through annotating the nodes and edges, and the ability to more easily track users’ shared interests and the influences that users may have on each other. See Pet. 53–55; Ex. 1003 ¶¶ 156–161.” slip op. at 30
Patent outcomesUS 9,208,439 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,208,439 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCSome claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00102 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 5 and 9 are unpatentable as indefinite under §112(b); the Board did not find claims 1–4, 6–8, and 10–28 unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record before us, particularly the ’459 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 22. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9– 10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8– 222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“5. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. See Nidec, 868 F.3d at 1017; see also Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 15
Patent outcomesUS 10,907,459 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 10,907,459 - Apple Inc. v. Rfcyber Corp.InstitutedPTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 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.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,018,724 - PTAB · Mar 24, 2022 · PGR2021-00112 · APJ Bryan F Moore · PGR · Institution
Instituted PGR on claims 1–20 because Petitioner showed a reasonable likelihood that claim 1 lacks written description support; all petition grounds were included.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“content for output.” Id. at 89. We determine, however, that Petitioner’s argument under Step 2A Prong One that claim 1 is directed to the “obtaining content for output” is not substantially different from the Examiner’s determination that claims 1‒20 recite “collecting information, analyzing it, and displaying certain results of the collection and analysis.” Compare Pet. 37–88 (citing e.g. Electric Power), with Ex. 2001, 193–194 (also citing Electric Power). In both cases, the argument is the same or substantially the same, i.e., that similarly identified subject matter of the claim is obtaining (collecting) data and displaying (outputting) it. Nevertheless, as to Step 2A Prong Two, we determine that the claims at issue in the ’096 prosecution differ in material ways from the ’903 patent claims at issue in this PGR. Specifically, the ’096 patent claims recite a touchscreen interface not recited in the ’903 patent claims. Additionally, the ’903 claims focus on the “output device” as performing the patented steps but in the ’096 prosecution history the “‘information apparatus performs the patented steps and “is integral to the claims” (as the Applicant argued). See Ex. 2008 [comparison of ’096 prosecution claims and ’903 claims]; Ex. 2001, 150; see also Pet. 89 (“the claims at issue in the ’067 application were different than the claims of the ’903 patent addressed here.”). rejection and arguments in the ’096 prosecution history turns on whether the claims in this PGR recite different elements that must be determined to integrate the judicial exception into a practical application (i.e., Prong Two of Step 2A). Petitioner argues that an essential element different than the ’096 claims, i.e. the output device, does not integrate the judicial exception into a practical application because the claims do not amount to an improvement to computer functionality. Pet. 37–72. We find this a close case. Nevertheless, due to the differences in the claims, we determine that the Examiner’s withdrawal of the § 101 rejection in light of the applicant’s arguments regarding the claim being directed to a specific technical solution is not substantially the same argument that Petitioner’s presents in the Petition as to Prong Two of Step 2A.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Lack of Written Description Support Petitioner contends that the challenged claims are unpatentable for lack of written description for the same reasons it contends the ’903 patent is PGR eligible. Pet. 13–36. The Specification of the ’903 patent has substantially the same disclosures as the Specification of the ’413 application relied on by Patent Owner (see Prelim. Resp. 20) to which the ’903 patent claims priority. Having determined that the disclosures in the ’903 patent Specification and the ’413 application is insufficient to provide written description support for the at least claim 1, we also determine that Petitioner has demonstrated a reasonable likelihood that at least claim 1 is unpatentable for the same reasons. Thus, we exercise our discretion and institute post grant review of claims 1–20 challenged under this ground. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1369–60 (2018).” slip op. at 33
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted
“in the art at the time of the invention] would have understood that an output system/device could be (or include) an information apparatus. Prelim. Resp. 24. We determine that Patent Owner’s argument has a logical flaw––i.e., the fact that a particular device could be used alternately as an information apparatus or an output device does not necessarily mean that it was known by one of ordinary skill in the art to use a combined information apparatus/output device and have the new combined device perform all the additional functions required by the claims. “The knowledge of ordinary artisans may be used to inform what is actually in the specification, but not to teach limitations that are not in the specification, even if those limitations would be rendered obvious by the disclosure in the specification.” Rivera v. Int’l Trade Comm’n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) (“Rivera”). “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification . . . . It extends only to that which is 1997). Patent Owner has not pointed to any disclosure in the ’413 application teaching that an “output device” can perform the functions of the “information apparatus” including its interactions with the “output device.” For example, claim 1 recites “wirelessly receiving, by the output system . . . output data from at least one server of the one or more servers over the Internet.” Ex. 1001, 37:28–32. At this stage, we find sufficiently persuasive Petitioner’s argument, which we discuss above, that the only written description support for an “output device” that performs the claimed functions by accessing the Internet provided by Patent Owner is not an “output device” but an “information apparatus.” Prelim. Resp. at 27–29.” slip op. at 29
§ 112 disclosureDiscretionary denialcites Mayo · Bilski · Electric PowerPatents in suitUS 11,029,903 - PTAB · Feb 8, 2022 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Institution
The Board instituted PGR on claims 1–28 and all petition grounds, finding the Luharuka, API 674, and Karassik challenge more likely than not to prevail on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” After considering the Petition and Patent Owner’s Preliminary Response, as well as all supporting evidence, we determine that Petitioner has satisfied the burden under 35 U.S.C. § 324(a) to show that it is more likely than not that at least one of the challenged claims is unpatentable.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“These arguments are not persuasive, however, because Patent Owner does not explain adequately how the disclosures of Oehring and Shampine are cumulative of the disclosure of Mu. In this case, the mere fact that 8 We note that Exhibit 2007 does not have ¶ 95 cited by Patent Owner. not mean necessarily that the references are cumulative of Mu. For instance, Petitioner relies on Mu for allegedly disclosing several claim limitations including “receiving a demand hydraulic horse power (HHP) signal,” “the first output power being in the range of approximately 70% to 100% of a maximum continuous power (MCP) level,” and “the second output power . . . being in the range of approximately 70% of the MCP level to approximately a maximum intermittent power (MIP) level.” Pet. 19–41. Patent Owner does not direct us to any disclosure in Oehring or Shampine that are cumulative of these alleged teachings in Mu. Accordingly, we do not agree with Patent Owner that either of Oehring or Shampine is cumulative of Mu. As such, we determine that Petitioner’s reliance on Mu does not involve the same or substantially the same art or arguments previously presented to the Office, and the first part of the Advanced Bionics framework is not satisfied with respect to Mu. And although Crowe is cited in the ’764 patent (see Ex. 1001, code (56)), Petitioner’s reliance on Crowe is minimal. The ground based on Mu and Crowe, thus, does not implicate § 325(d).” slip op. at 8
- Skill levelOther
“This dispute presents a factual issue best decided on a complete record. Accordingly, for purposes of the Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Lastly, on the current record, we disagree with Patent Owner’s argument that Mr. Marscher is not qualified to serve as an expert in this proceeding. See Prelim. Resp. 8. Mr. Marscher’s declaration and curriculum vitae show that he has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004.” slip op. at 11
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,815,764
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.