- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.Some claims unpatentablePTAB · Nov 25, 2025 · PGR2024-00030 · APJ Linda E Horner · PGR · Final written decision
Claims 17 and 18 are unpatentable under §112(d) for improper dependent form; claims 1–10 and 12–16 were not shown unpatentable on the asserted obviousness grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We do not credit Dr. Anthony’s testimony, which is based on the arbitrary shading in Figure 7 (see Ex. 1002 ¶ 174), that Schröder teaches or suggests limitation 1[d] because it (1) is inconsistent with Petitioner’s reasoning for limitation 1[c], and (2) it is based on an admitted misreading of the embodiment of Schröder’s Figure 5 (see Ex. 1002 ¶ 175). As to the first item, Dr. Anthony states that “a POSITA would have been motivated to place a battery in a part of the cavity that is far from a PCB holding other electrical components because that configuration allows for better thermal management.” Ex. 1002, para. 175. The problem with this statement is that Petitioner relies on Schröder’s teaching that inlay 12, i.e., the alleged PCB, could include “other electrical components,” such as a battery to support its position that Schröder suggests placing a battery between the ring halves. See, e.g., Pet. Reply 2 (pointing to Dr. Mercier’s depo testimony that inlay 12 with “other components” is inserted between ring halves); id. at 3 (relying on Schröder’s teaching about placing components in depressions on inlay 12). So, Petitioner earlier asserts for the battery limitation 1[c] that Schröder teaches or suggests putting a battery on inlay 12 inside the ring halves, but then for limitation 1[d], Dr. Anthony testifies that a POSITA would place the battery “far” away from the inlay 12 (i.e., the alleged PCB). These positions are inconsistent.” slip op. at 25
- Skill levelSkill level board ownOther
“at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶¶ 18–22). Petitioner also contends that a person of ordinary skill would have been “familiar with, for example, sensor system design and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 26. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’178 patent and the references cited in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner indicates that in the related ITC proceeding involving the ’178 patent, the Administrative Law Judge (ALJ) adopted three constructions agreed-upon by the parties in that proceeding8 and also construed two disputed terms.9 Resp. 26–27 (citing Ex. 2016, 5, 6, 14). Patent Owner agrees with Petitioner, however, that no terms need to be construed to decide the issues raised in the Petition. Id. at 27. We reviewed the constructions adopted by the ITC. Ex. 2016, 5, 6, 14. 8 In the ITC proceeding, the ALJ adopted the parties’ agreed-upon constructions that: (1) the preamble of claim 1 [a finger-worn wearable ring device] is limiting; (2) [positioned/configured to fit] within a “cavity” is [positioned/configured to fit] within a “hollow space”; and (3) [the internal housing component] “coupled with” [the external housing component] is [the internal housing component] “connected with” [the external housing component]. Ex. 2016, 5. 9 In the ITC proceeding, the ALJ construed the claims such that: (1) the internal and external housing components of claims 1, 12, and 17 enclose space and do not necessarily exclude potting material; and (2) “circumferential,” as recited in claims 1, 17, and 18, does not require a closed shape. Ex. 2016, 14, 17. These constructions are not germane to the issues we need to decide to resolve this proceeding. Thus, we agree that no explicit claim construction is necessary for this decision. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “Mestas’s batteries, layout, and other components . . . would have to be scaled down 5 to 10 times to be appropriately sized for a finger worn ring.” Resp. 64 (internal quotation marks omitted) (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Moreover, we do not credit Dr. Anthony’s testimony that miniaturization of the battery would have been “trivial to implement.” Ex. 1002 ¶ 242. Dr. Anthony admitted on cross-examination that it would not have been within the level of skill of a person having ordinary skill in the art to design a smaller version of Mestas’s battery, and that such a person would need to procure a battery of the appropriate size and specifications for implementation in a finger-ring from a battery manufacturer. Ex. 2021, 315:9–318:9. Yet Dr. Anthony had not ascertained, for purposes of his testimony, whether there was a battery available in 2013 that was appropriate to fit within the inlay space of the modified version of Schröder’s finger-ring that he and Petitioner allege would have been obvious to one of skill in the art at that time. Id. at 321:5–10. Further, we credit Dr. Mercier’s testimony that Dr. Anthony’s testimony fails to consider the differences in power requirements between Mestas and Schröder or to account for the constraints of such a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶¶ 159–160. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’178 patent, we also have evidence that prior art “finger ring wearables up to the ’178 patent had used ‘coin’ type batteries.” Id. at 66 (citing Ex. 2018 ¶ 161). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would look to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 161. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura), Fig. 24; Ex. 2018 ¶¶ 61–70. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring-type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 71. Based on these findings, Petitioner has not met its burden to show by a preponderance of the evidence that a person having ordinary skill in the art would have been led to modify Schröder’s finger-ring to place a curved battery between the internal and external housing components in light of the teachings in Mestas. Thus, Petitioner has not met its burden to show by a preponderance of the evidence that dependent claim 3 of the ’178 patent is unpatentable over Schröder and Mestas.” slip op. at 38
Patent outcomesUS 11,868,178 mixedClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,868,178 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Mar 15, 2023 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–12, 15–17, and 21–23 are unpatentable; the revised contingent motion to amend is granted for claim 32 and denied for claims 24–31, 33–35, 38–40, and 44–46.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 22
- BurdenNot shown unpatentable
“Accordingly, based on the foregoing and the complete record before” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“C. Claim Construction We apply the claim construction standard articulated in Phillips v.” slip op. at 23
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteMixed
“persuaded by Petitioner that the limitations “a channel-shaped portion configured to receive the structural component” and “a base configured to receive an end portion of the structural component thereon to support the structural component” would not have informed the skilled artisan, with reasonable certainty, about the scope of the claimed invention. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). Accordingly, we conclude that Petitioner” slip op. at 40
Patent outcomesUS 11,021,867 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - 3shape A/S / 3shape Inc. v. Align Technology, Inc.Institution deniedPTAB · Jan 11, 2022 · IPR2021-01120 · APJ Neil T Powell · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 were obvious over Babayoff ’529 and Atiya.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya. III. CONCLUSION For the foregoing reasons, we determine that the information presented in the record does not establish there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim of the patent ’151 patent. Accordingly, we do not institute an inter partes review. IV. ORDER For the reasons given, it is: ORDERED that the Petition is denied; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill is supported by expert testimony and appears consistent with the technology at issue, for purposes of this Decision, we apply Petitioner’s definition of a person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In response, Patent Owner objects that “Petitioners’ interpretation of the claims as requiring the use of unfiltered white light to determine depth data is plainly at odds with the claims themselves.” Prelim. Resp. 4. Patent Owner argues that “[t]his interpretation leads to a contradiction between the independent and dependent claims: the same light illuminating the intraoral structure would have to be simultaneously filtered (as recited in the dependent claims) and unfiltered (as Petitioners presume to be required by the independent claims).” Id. Patent Owner also suggests the possibility that the Petition’s arguments mean “the independent claims encompass using unfiltered white light to obtain depth data.” Id. at 7. We do understand the Petition’s arguments to mean that the independent claims encompass using unfiltered white light to illuminate an intraoral structure, not that the independent claims require using white light to illuminate an intraoral structure. And we agree with that understanding of the independent claims’ scope. Consistent with Patent Owner’s explanation, if we construed the independent claims to require using unfiltered white light to illuminate an intraoral structure, that would conflict directly with the dependent claims’ express requirement to use colored filters.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“2. Summary Regarding Obviousness Challenge Because Patent Owner’s arguments and evidence persuasively rebut Petitioner’s assertion that the Ancestral Applications do not provide written description support for the challenged claims, Petitioner has not shown adequately that Babayoff ’529 is prior art to the challenged claims. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its assertion that claims 1, 4, 10, 11, 13, 18, 19, 25, and 30 would have been obvious over Babayoff ’529 and Atiya.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,750,151 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision
Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.
RulingsFinal written decision- Skill levelOther
“ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16
Patent outcomesUS 8,657,009 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 8,657,009 - Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentablePTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision
Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26
Patent outcomesUS 9,074,451 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 9,074,451 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-00163 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 and 19–24 are unpatentable over Koster and Koster with Smith, respectively; claims 11 and 12 were not shown unpatentable, and the motion to amend was denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner
“evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“reasonable likelihood of prevailing on this proposed ground of unpatentability. Inst. Dec. 19–24. We have reviewed Petitioner’s anticipation arguments and supporting evidence, including Koster’s disclosure, the detailed arguments appearing on pages 31–38 of the Petition, and the testimony of Dr. Horst. Despite the counter-arguments in Patent Owner’s Response, and the evidence cited therein, which we also have considered, Petitioner has shown, by a preponderance of the evidence, that each of claims 4–6 is unpatentable under 35 U.S.C. § 102 as anticipated by Koster. Petitioner, however, has not shown, by a preponderance of the evidence that Koster anticipates claims 11 and 12.” slip op. at 27
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - Apple Inc. / HTC Corporation et al. v. Memory Integrity, LLCSome claims unpatentablePTAB · Jun 21, 2016 · IPR2015-01353 · APJ Jennifer S Bisk · IPR · Final written decision
Claims 4–6 are unpatentable as anticipated by Koster, claims 19–24 are unpatentable as obvious over Koster and Smith, and claims 11–12 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“ANALYSIS A. Level of Ordinary Skill in the Art We begin our analysis by addressing the level of ordinary skill in the art. Dr. Horst and Dr. Oklobdzija agree that a person of ordinary skill in the art would have had at least a “bachelor’s degree in electrical engineering, computer engineering, or computer science” and “two years of experience in the design of multiprocessor systems.” Ex. 1014 ¶ 8; Ex. 2016 ¶ 8. We adopt this proposal as the level of ordinary skill in the art, based on the testimony of the parties’ experts as well as our review of the ’121 patent and the prior art involved in this proceeding.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“For the reasons discussed below, however, despite the arguments and evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[e] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“The heart of the dispute regarding this limitation, however, lies in whether the disclosure of microprocessors as devices in a system necessarily discloses that those microprocessors are “programmed.” Because the ’121 patent does not illuminate this issue, but instead the parties rely on expert testimony and other extrinsic evidence to support their respective positions, we consider this issue to more properly fall within the category of unpatentability as opposed to claim construction. See Pet. 34–36; PO Resp. 12–19, 25–29; Reply 5–8. Thus, we do not further construe the term “programmed” other than to note that the ’121 patent uses the term in the ordinary and customary manner. See Ex. 1001, 7:49–52, 27:64–28:24, 29:1–3; Ex. 2012, 359; Ex. 2013, 590–91; Ex. 2014, 931.” slip op. at 24
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner fails to proffer evidence sufficient to rebut Patent Owner’s evidence that Koster’s disclosure of a microprocessor does not necessarily disclose that the microprocessor is programmed. Dr. Horst, in his original declaration, asserts that “a requesting microprocessor must be programmed to complete a memory transaction after receiving a first number of responses to a first data request.” Ex. 1014 ¶¶ D-17–D-18. This assertion, however, is conclusory, and does not sufficiently explain why the microprocessor must be programmed or exclude possibilities other than programming. See id.; PO Resp. 27. In particular, Dr. Horst’s original declaration testimony provides no discussion or explanation as to whether a microprocessor composed solely of hardwired logic would necessarily be programmed and whether the functionality described in Koster could not be implemented using hardwired logic. See Ex. 1014 ¶¶ D-17–D-18; PO Resp. 27.” slip op. at 34
Patent outcomesUS 7,296,121 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 7,296,121 - PTAB · Jul 23, 2015 · IPR2015-00158 · APJ Neil T Powell · IPR · Rehearing
The Board denied Sony’s rehearing request, leaving institution denied for all challenged claims because the petition failed to establish the asserted priority-date and Luick limitations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 5
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Table (“GCT”) constitutes “probe filtering information,” as recited in independent claims 1, 16, and 25. See Pet. 34–35. Our Decision denied the claim challenges based on Luick, holding that Petitioner had not addressed adequately the limitation in the independent claims that the “probe filtering information” is “representative of states associated with selected ones of the cache memories.” Dec. 32–33. Specifically, our Decision explained that the Petition did not persuade us that Luick or any of the other cited references teach this limitation. Id. at 33–34. Our Decision noted that we were persuaded that Luick’s GCT contains information about which nodes contain shared data blocks, but does not contain information about whether those nodes have the data blocks in memory 105 or cache 107. Id. at 33. Our Decision further explained that it was “not facially apparent that the information in Luick’s GCT is ‘representative of states associated with selected ones of the cache memories.’” Id. Additionally, our Decision noted, the Petition neither provided any explanation showing that Luick’s GCT contained information “representative of states associated with selected ones of the cache memories,” nor asserted that any of the other cited references teach this limitation. Id. at 33–34.” slip op. at 6
- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“Petition’s argument that the definition of “probe filtering information” changed between the ’347 application and the ’161 application. See, e.g., Dec. 15–16. The Petition suggested that the effect of the alleged definition change is that the probe filtering information disclosed in the ’347 application bears no relationship to the claims of the ’121 patent. See Pet. 6 (“the definition of ‘probe filtering information’ changed between the [’347 application] and the ’121 Patent such that the definition in the [’347 application] is admittedly unrelated to the claims of the ’121 Patent”). In our Decision, we held that, contrary to the Petition’s argument, we were persuaded that the probe filtering information disclosed in the ’347 application does relate to the probe filtering information in the challenged claims. Dec. 17. Specifically, we held that we were persuaded that the “probe filtering information” disclosed in the ’347 application constitutes “probe filtering information” under the broadest reasonable interpretation of that language in the challenged claims. Id. The Petition did not argue, as the request now suggests, that the challenged claims are not entitled to the filing date of the ’347 application because the ’347 application does not provide written description support for the full scope of the challenged claims. Accordingly, we are not persuaded that the request identifies a matter in the Petition that we overlooked or misapprehended.” slip op. at 4
§ 103 obviousness§ 112 disclosurePatents in suitUS 7,296,121
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.