• SAP America, Inc. v. Cyandia, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01433 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 are unpatentable as obvious over the PCT Publication and Austin-Lane.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” PO Resp. 9. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. 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).” slip op. at 9

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

    “device indicated by the session data” encompasses “determining a notification method based on” session data indicating the current state of the external device, where the current state of the device encompasses an online state as well as an offline state. See Pet. 53–54; Tr. 55:3–10 (The Board: “Are there any other states of an external device other than online or offline?” Patent Owner: “As far as I know, Your Honor, those are the only two[.]”), Tr. 65:24–66:1 (The Board: “When the claim says current state, they mean it’s online or offline?” Petitioner: “Correct.”), Tr. 20:23–21:8. The specification is consistent with the plain language of the claim in disclosing two examples of the claimed “current state,” namely, online and offline. Ex. 1101, 21:1–4. The specification discloses that the notification manager “queries session manager 456 to determine the user’s connectedness.” Id. at 21:6–8. The specification discloses that if the user is “online, notify by, for example, the user’s active session. If offline, notify by, for example, a txt [sic] message, call the user’s landline, call a friend of the user, and the like.” Id. at 21:1–4, 23:28–31.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Patent Owner’s expert witness, Dr. Goodrich, show written description support for providing a notification to an active external device, Patent Owner has not cited any portion of the 2009 Parent, nor any portion of the testimony of Dr. Goodrich, to show that the 2009 Parent provides written description support for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. We highlight that Paragraphs 130 and 131 of the 2011 CIP Application disclose offline notification preferences for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. Ex. 1110 ¶¶ 130–131. Specifically, paragraphs 130 and 131 describe that: the notification manager of the eventing and alerting subsystem 452 queries the configuration server 454 for the user's notification preferences and correlates these notification preferences with session manager 456 to determine the best notification method. That is, the notification manager queries the configuration server 454 and determines, for example, that the user has certain online notification preferences and certain offline notification preferences. If online, notify by, for example, the user's active session. If offline, notify by, for example, a txt message. . . . The notification manager of the eventing and alerting subsystem 452 then queries session manager 456 to determine the user's connectedness. Id. That is, if the user’s connectedness, or “current state” of the claimed external device, is offline, and the user’s offline notification preferences are “notify by txt message,” the notification manager will determine that the notification method for the external device having a current state of offline is by txt message. See id. Thus, the 2011 CIP Application describes a notification manager that queries a session manager to determine whether an external device is offline, and if the external device is offline, determines a notification method for providing an alert on the external device based on the current status of the external device as offline and the user’s offline notification preferences. Although we find this written description support for the determining limitation in the 2011 CIP Application, we do not find this written description support in the 2009 Parent.” slip op. at 25

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

    “As to the “determining a notification method” limitation (1.10), Petitioner asserts that Austin-Lane teaches determining: (1) the user device(s) to send the notification to (e.g., phone, PDA, notebook computer, desktop computer); (2) the communication protocol to use to send the notification, i.e., how to send the notification (e.g., SMTP (for email), SMS (for texts), HTTP (for web browsers)); and (3) the type of alert to provide, i.e., how to present the notification, (e.g., text, an icon, a pop-up window, a video, an email, an audible or tactile alarm), based on the current state of the at least one external device indicated by the session data (“presence information”), which may include whether and on which device(s) the user is online and/or whether and on which applications the user has an active session. Id. at 53 (internal citations omitted) (citing Ex. 1105 ¶¶ 4, 5, 29, 32, 33, 39, 46, 48, 61, 79, Fig. 1). We highlight that paragraph 61 of Austin-Lane discloses that: The type preferences 650 may include preferences for various notification types. . . . [A]uction alert #1 660 defines the following delivery precedence 663: (1) a web browser (if the user is online), (2) an IM client (if the user is online), (3) a mobile phone #1, (4) a PDA, (5) a mobile phone #2, (6) a pager, and (7) an email inbox. Ex. 1105 ¶ 61; see id. ¶¶ 74–77 (Describing that one of several notification methods for delivering an alert to a user’s device is determined based on the current state of the user’s device as online or offline). Thus, Austin-Lane describes determining a notification method by which to provide an alert on an external device based on the current state of the external device as online as well as offline.” slip op. at 29

  Patent outcomesUS 8,751,948 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 8,751,948
• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · Apr 28, 2025 · PGR2024-00048 · APJ Stacey G White · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that claims 1–6 were unpatentable.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review 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.” 35 U.S.C. § 324(a) (2024). Upon considering the evidence and arguments presented, we determine, as discussed below, that Petitioner has not demonstrated that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny1 Petitioner’s request to institute post-grant review of claims 1–6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s declarant, Dr. Khatri, proposes a definition of the person of ordinary skill in the art. Ex. 2001 ¶ 24. Dr. Khatri, however, notes that his opinions would be the same under either his proposal or Petitioner’s proposal. Id. ¶¶ 25–26. Patent Owner states that, for purposes of the Preliminary Response, it “adopts Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 13 (citing Pet. 22–23; Ex. 2001 ¶¶ 22–26). We determine that the current record supports Petitioner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Petitioner’s description of an ordinarily skilled artisan. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

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

    “Petitioner proposes constructions for the claim terms “MLC memory modules” and “SLC memory module.” Pet. 23–28. Patent Owner disagrees with Petitioner’s constructions, but does not contest them because it argues that construction of these terms is not necessary to resolve the parties’ disputes. Prelim. Resp. 14. Based on the record presented, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post- grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Federal Circuit has held that “[t]he written description requirement is met when the disclosure relied on for support ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted)). The written description inquiry is a question of fact, is context specific, and must be determined on a case-by-case basis. Ariad, 598 F.3d at 1351 (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon, 418 F.3d at 1357–58). Factors used to evaluate the sufficiency of a disclosure include: 1) “the existing knowledge in the particular field”; 2) “the extent and content of the prior art”; 3) “the maturity of the science or technology”; and 4) “the predictability of the aspect at issue.” Id. (citing Capon, 418 F.3d at 1359). As support for the term “memory space,” the ’612 patent explains that because “the SLC NAND flash is used to boost the lifetime (endurance) of the storage system, it can be considerably lesser in amount than the MLC NAND flash.” Ex. 1001, 5:20–23; see Ex. 2001 ¶ 51. As an example, the ’612 specification states that “a system may set SLC NAND flash equal to 12.5% or 25% of MLC NAND flash (total non-volatile memory storage space=MLC+SLC).” Ex. 1001, 5:23–25; see Ex. 2001 ¶¶ 51, 62. In addition, we find persuasive Dr. Khatri’s testimony that one of ordinary skill in the art would have understood that “there are two spaces—MLC and SLC—where data is stored, and the total memory space is the combination of the two.” Ex. 2001 ¶ 51. Further, the ’612 patent’s Figure 1 depicts “memory space,” e.g., dynamic random-access memory (DRAM) 20, one or more disks 24, MLC NAND flash memory module 26, and SLC NAND flash memory module 28. Ex. 1001, 5:37–45, Fig. 1; see Ex. 2001 ¶ 64. The ’612 patent’s Figure 4 also depicts “memory space,” e.g., NAND flash memory bank 56 comprising “a plurality of MLC NAND flash memory modules 60a and a plurality of SLC NAND flash memory modules 62a” and NAND flash memory bank 58 comprising “a plurality of MLC NAND flash memory modules 60b and a plurality of SLC NAND flash memory modules 62b.” Ex. 1001, 7:8–14, Fig. 4; see Ex. 2001 ¶ 64. On the record before us, we find the above noted disclosures to be sufficient to support the disputed claim language. For these reasons, the ’612 patent’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad, 598 F.3d at 1351.” slip op. at 15

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,854,612
• SAP America, Inc. v. Cyandia, Inc.Instituted
  PTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution

  The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12

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

    “We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,751,948
• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.

  RulingsInstitution decision

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

    “to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, 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.” 35 U.S.C. § 324(a) (2024).” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable

    “2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36

  § 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,830,546
• Unified Patents, LLC v. Ideahub Inc.All claims unpatentable
  PTAB · Feb 5, 2024 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Final written decision

  Claims 1–13 are unpatentable for lack of written description under § 112(a); the Board did not reach the anticipation and obviousness grounds based on HEVC265.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art at the priority date for the ’274 Patent (“POSITA”) would have had a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as physics or computer science, and two years of work experience with video processing. A lack of experience can be remedied with additional education (e.g., a Master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years). This definition would apply at the earliest claimed priority date of the ’274 Patent as well as any later date. Pet. 12 (citing Ex. 1005 ¶¶ 50–52). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s definition as it appears to be consistent with the Specification of the ’274 patent and the cited reference.” slip op. at 14

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “A party is collaterally estopped from relitigating an issue if: (1) a prior action presents an identical issue; (2) the prior action actually litigated and adjudged that issue; (3) the judgment in that prior action necessarily required determination of the identical issue; and (4) the prior action featured full representation of the estopped party. VirnetX Inc. v. Apple, Inc., 909 F.3d 1375, 1377 (Fed. Cir. 2018) (citing Stephen Slesinger, Inc. v. Disney Enterprises, Inc., 702 F.3d 640, 644 (Fed. Cir. 2012)).” slip op. at 21

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “For the reasons that follow, we determine that the ’928 application does not provide sufficient written description support, for at least independent claim 1 of the ’274 patent, so as to “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of the ’928 application. Ariad, 598 F.3d at 1351. Accordingly, we are persuaded that the ’928 application lacks sufficient written description support for the invention recited in claim 1 of the ’274 patent, and thus, claim 1 does not receive an effective filing date as early as that of the ’928 application (i.e., December 23, 2010). We further determine that Petitioner filed the Petition within the 9-month statutory period for requesting post-grant review in accordance with 35 U.S.C. § 321(c). The ’274 patent issued on September 14, 2021 (see Ex. 1001, code (45)), and the present Petition was accorded a filing date of June 9, 2022 (see Paper 5). Accordingly, the Petition was filed less than 9 months after the date of issuance of the ’274 patent. In view of the above, we are persuaded that the ’274 patent is eligible for post-grant review.” slip op. at 16

  Patent outcomesUS 11,122,274 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,122,274
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) 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 appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7

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

    “Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17

  • 112 supportMotion to amend, deniedDenied

    “In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40

  Patent outcomesUS 8,581,706 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,581,706
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) 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 appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7

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

    “We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 23

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

    “discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17

  Patent outcomesUS 8,581,706 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,581,706
• Walmart Inc. / Current Lighting Solutions, LLC v. Power Concepts, LLCAll claims unpatentable
  PTAB · Sep 15, 2023 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–14 are unpatentable; the contingent motion to amend proposing claims 15–28 and the motion to exclude are denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “of the claimed “light emitting diode.” Looking at the intrinsic evidence, neither the claim nor the specification defines the light emitting diode as including an integrated lens. With respect to Dr. Bretschneider’s analysis of Dowling’s lens described in paragraph 24, we disagree with Dr. Bretschneider’s conclusion that Dowling’s lens does not teach a lens as claimed. Ex. 2076 ¶ 431 (citing Ex. 1007 ¶ 24).” slip op. at 31

  • 112 supportMotion to amend, deniedDenied

    “electriciaan” and not a “licensed electrician.” Opp. 3–4 (citing Ex. 1002, 25 ¶¶ 6–7, 32 ¶¶ 46, 48). Instead, Petitioner argues that “the disclosure lacks the term ‘licensed electrician,’ lacks a definition of ‘licensed electrician,’ and lacks an explanation of what type of electrical connection would be allowed without the assistance of a licensed electrician.” Id.; Ex. 1035 ¶¶ 76–79) (emphasis omitted). Accordingly, Petitioner argues that the original application does not support proposed substitute claims 23 and 28. See id. We are persuaded by Petitioner’s argument. The ’295 and ’447 applications describe a “skilled” electrician, not a “licensed” electrician. Patent Owner does not show that one of ordinary skill in the art would interpret these to be equivalent. Accordingly, we find that proposed substitute claims 23 and 28 adds new matter. Proposed substitute claim 24 depends from claim 23 and thus includes the same new matter.” slip op. at 63

  • Disclosure Requirements (§112) › Definiteness (Nautilus)Indefinite

    “electrician. See id. (citing Ex. 1002, 25 ¶¶ 6–7). Petitioner’s declarant, Dr. Ducharme, attests that a “licensed electrician is an individual who has obtained a license from a regulatory authority such as a state or local government.” Ex. 1035 ¶ 85. The licensing standards set forth “differ depending upon a given industry” and “change over time.” Id. Accordingly, Petitioner asserts that “one skilled in the art is left to speculate as to what type of electrical wirings require a licensed electrician and which do not — there is no reasonable certainty of the scope of the claimed invention, as the standard requires.” Opp. 5–6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). We are persuaded by Petitioner’s argument that proposed substitute claims 23 and 28 are indefinite. Specifically, we agree that there is no reasonable certainty as to the definition of a licensed electrician, nor how to adapt wiring for series connection without the required assistance of a licensed electrician. Accordingly, we find that proposed substitute claims 23 and 28 are indefinite. Proposed substitute claim 24 depends from claim 23 and thus includes the same indefinite limitation.” slip op. at 64

  Patent outcomesUS 10,429,041 unpatentable
  § 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,429,041
• Unified Patents, LLC v. Ideahub Inc.Instituted
  PTAB · Feb 6, 2023 · PGR2022-00044 · APJ Monica S Ullagaddi · PGR · Institution

  The Board instituted post-grant review of claims 1–13 on all grounds, finding it more likely than not that at least claim 1 lacks written-description support.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 324(c); 37 C.F.R. § 42.4(a) (2021). 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, Patent Owner’s Preliminary Response, Petitioner’s Preliminary Reply, Patent Owner’s Preliminary Sur-reply, as well as all supporting evidence, we determine that Petitioner satisfies its 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 of the ’274 patent is unpatentable. Therefore, we authorize a post-grant review to be instituted as to all grounds and all challenged claims. 37 C.F.R. § 42.208(a) (“When instituting post-grant 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.”).” slip op. at 2

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “Id. at 7:24–8:4 (emphasis added). The ’928 application repeatedly makes clear that directionality and intra mode are related, but distinct concepts. They are not interchangeable as Patent Owner argues. On this point, we find Dr. Freedman’s explanation in paragraph 85 of his Declaration on the relationship between “intra mode” and “directionality” to be particularly well-reasoned and persuasive. As Dr. Freedman explains, [t]hroughout the ’928 application, the text uses the term “directionality” to refer to characteristics of neighboring blocks, whereas the term “intra mode” is used when referring to the current block. For example, the ’928 application describes that “directionality” of neighboring blocks is “estimated from the neighboring blocks” that “have already been reconstructed” while the “intra mode” is selected for the current block for purposes of reconstructing that current block. This is likely because the neighboring blocks “have already been reconstructed” and thus, the intra mode number that was used in reconstructing those blocks is no longer pertinent. Instead, what is pertinent in the ’928 application’s method is the directionality characteristic of those neighboring blocks. Phrased differently, in the ’928 application, directionality is a concept that is evaluated after performance of intra prediction (i.e., after reconstruction), whereas the intra mode or number is a concept used during performance of intra prediction. They are not equivalent in the context of the ’928 application. Ex. 1005 ¶ 86 (citing Ex. 1028, 11:14–12:4, 25:10–15; Ex. 1036, 706 (“The DCT coefficients gathered from the MPEG 2 process are used to estimate the directional features in a picture. The estimated directional features are then used to compute the intra prediction modes in the H.264 encoding stage.”)).8 Thus, we are persuaded by Dr. Freedman’s testimony, supported by Kalva, that these terms are not synonymous, as is Patent Owner’s and its expert’s position.” slip op. at 31

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached

    “Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38

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

    “F. Anticipation and Obviousness Challenges Based on HEVC265 Petitioner contends that claims 1–4 and 6 are anticipated by, or alternatively, rendered obvious in view of HEVC265. Pet. 49–52. Patent Owner argues that HEVC265 is not prior art because it was published in 2013. Prelim. Resp. 24. Insofar as we determine that the ’928 application does not provide sufficient written description support for at least claim 1, and insofar as no other patent or application in the priority chain of the ’274 patent was filed before 2013 (see Pet. 19), Patent Owner’s argument is unavailing as to this claim. As we preliminarily conclude that Petitioner demonstrates that it is more likely than not to prevail on its challenge to independent claim 1 based on lack of written description support, we institute review on all challenged claims on all grounds set forth in the Petition, including Petitioner’s anticipation and obviousness challenges to claims 1–4 and 6 applying HEVC265. See SAS, 138 S. Ct. at 1354; PGS, 891 F.3d at 1360.” slip op. at 38

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,122,274
• Google LLC / Microsoft Corporation v. Carolyn W. HafemanInstituted
  PTAB · Jan 31, 2023 · IPR2022-01191 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board instituted IPR on claims 1–7 under both asserted grounds, finding a reasonable likelihood of anticipation by Hafeman 670 and declining discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “We agree with Petitioner. Our binding guidance states that the Board “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Memorandum, 7. Petitioner could not make such a stipulation in district court litigation to which it is not a party. Instead, LG, as the defendant in the LG Litigation and a real party in interest in this proceeding, made such a stipulation, and LG’s stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. Indeed, in advocating for discretionary denial in view of the LG Litigation, Patent Owner argues that “for all intents and purposes, Google and Microsoft are ‘the same party’ as LG in the litigation.” Prelim. Resp. 22. Patent Owner, therefore, effectively treats Petitioner and LG as the same entity to argue for discretionary denial.” slip op. at 10

  • Parallel petitionsDecided for petitioner

    “In light of the priority dispute with respect to the challenged claims, we determine that two petitions are justified. See Patent Trial and Appeal Board Consolidated Trial Practice Guide6 (Nov. 2019), 59 (“[T]he Board recognizes that there may be circumstances in which more than one petition 6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.”). We also note the that two petitions together present a total of four grounds, and addressing the grounds in the two petitions does not create a substantial burden on the Board or the parties under these circumstances.” slip op. at 11

  • Skill levelSkill level petitioner adoptedOther

    “(“POSITA”) would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or the equivalent and at least two years of experience in the relevant field, e.g., electronic communications systems.” Pet. 27 (citing Ex. 1003 ¶¶ 95–97). Petitioner also contends that “[s]ignificantly more practical experience could also qualify one not having the aforementioned education as a person of ordinary skill in the art while, conversely, a higher level of education could offset a lesser amount of experience.” Id. At this stage of the proceeding, Patent Owner neither addresses Petitioner’s proposed definition nor proposes a different level of skill in the art. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 12

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

    “We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2021). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Petitioner presents two issues for claim construction. Pet. 23–27. First, Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Id. at 23–26. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Id. at 26–27. Patent Owner “takes no position” on Petitioner’s first claim construction argument, and disputes Petitioner’s second argument. Prelim. Resp. 8–12. We determine that no claim term requires express construction for purposes of this Decision.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 10,789,393

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.