- 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentablePTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision
Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36
Patent outcomesUS 11,806,209 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,806,209 - PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01077 · APJ Michael A Valek · IPR · Final written decision
Claims 1, 11, and 13–20 were not shown unpatentable over either Yuen and Mestas or Schröder and Mestas, principally because the curved-battery and waterproof-cavity showings were deficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the term “ring” is not limited to a finger- worn ring. All of the challenged independent recite a “wearable ring computing device” (claims 1 and 11) or “ring computing device” (claim 14). Nothing in the claim language itself refers to where that device is worn. Moreover, the fact that Patent Owner has in several related patents added claim language to expressly recite a ring that is “finger-worn” or “worn around the finger” evidences that the plain meaning of the term “ring” by itself does not require such. Ex. 1362, 44:45–46:61 (claims 1–18); Ex. 1363, 44:64–46:56 (claims 1–17); Ex. 1364, 48:22–23 (claim 1); see Nystrom v. TREX Co., Inc., 424 F.3d 1135, 1143 (Fed. Cir. 2005) (explaining that the fact that another claim recites a “wood decking board” suggests the term “board” is not itself limited to one made from wood or cut from a log because “[w]hen different words or phrases are used in separate claims, a difference in meaning is presumed”). This understanding is further supported by the Specification of the ’859 patent. It is true, as Patent Owner asserts, that the Specification describes a preferred embodiment that is a finger-worn ring. See, e.g., Ex. 1001, Figs. 22A–B, 23A (depicting a finger-worn ring). But precedent cautions against importing limitations from the preferred embodiment into claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2004) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Indeed, the Specification here anticipates such arguments and makes clear that the applicants’ wearable computing device (WCD) is not limited to a ring worn on the finger: The WCD can be in the form of a ring that can be worn on the finger of a human (or animal) user. Although the WCD of the present disclosure is depicted as a ring that can be worn on the finger of a user, other shapes, designs, and form factors can be utilized for the WCD. For example, the WCD can be in the form of a wrist band, bracelet, necklace, earring, or any other type of wearable accessory. In this regard, references to the finger of a user in the present application can be considered to apply to other portions of a human body depending on the form of the WCD, such as wrist, neck, ear, etc. Ex. 1001, 8:51–61.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“ordinarily-skilled artisan to modify Yuen’s device to form the waterproof cavity recited in claim 1, much less explain the particular modifications Petitioner contends that artisan would have made to Yuen’s device housing to achieve such. This is particularly problematic given that the figures Petitioner relies upon in Yuen and Mestas uniformly depict larger, wrist/arm-band type devices. See Ex. 1006, Figs. 2–13, 12:52–55 (depicting a “wrist-worn or arm-mounted accessory such as a watch or bracelet”); Ex. 1010, Figs. 1–6, ¶ 151 (same). Thus, Petitioner’s obviousness theory requires multiple modifications to Yuen’s depicted structure: (1) modifying the identified portions of Yuen’s device housing so that they form a waterproof cavity therebetween; and (2) shrinking that device and its components down to a ring designed to fit around a single toe. We credit Dr. Mercier’s testimony that such modifications would require a “complex” re-engineering of Yuen’s existing structure that Petitioner and Dr. Anthony do not sufficiently explain. See Ex. 2018 ¶¶ 108–109, 129–130, 137–138. The testimony in Dr. Anthony’s supplemental declaration does not provide the missing explanation. Dr. Anthony continues to assert that Yuen’s sensor protrusion is sealed in the space between the alleged bounding members, relying on the same annotated versions of Figures 4 and 5, without addressing the fact that according to Petitioner’s own annotations those bounding members only form a shell that is open to the attachment band at either end. See Ex. 1079 ¶¶ 26–28. Indeed, Dr. Anthony appears to acknowledge that Yuen only teaches attaching the sensor module portion of the alleged cavity with watertight glue, but asserts that “it would not make sense to have a device that is waterproof in some areas and not others.” Id. ¶ 29. That assertion, however, is not supported by anything beyond Dr. Anthony’s say-so and ignores that Yuen’s teachings regarding a watertight seal/glue refer only to the sensor package portion of the alleged cavity. See Ex. 1006, 14:66–15:4, 15:10–14. Dr. Anthony’s assertion that Mestas teaches additional “waterproofing techniques” that could be applied to Yuen’s housing is similarly cursory. See Ex. 1079 ¶ 30. He does not identify what those techniques are or how a POSITA would use them to modify Yuen. Id. Accordingly, we do not credit this testimony.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (emphasis added)). “That is, presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Id. (internal quotation marks omitted). If, on the other hand, “the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process, the patentee is not entitled to a presumption of nexus.” Id. (internal quotation marks omitted).” slip op. at 33
Patent outcomesUS 10,139,859 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Dec 16, 2025 · IPR2025-01046 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 2–15, finding a reasonable likelihood that the 1946 Cyclopedia, Lindström, and Wong render at least claim 2 obvious; claim 1 was disclaimed.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that Petitioner’s proposed level of ordinary skill in the art is incorrect, “because design or analysis experience with other industrial wheeled vehicles would not necessarily be applicable to the art of the ’892 Patent.” Prelim. Resp. 12 (citing Ex. 2035 ¶¶ 38–39). According to Patent Owner, a person of ordinary skill in the art “would have at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years of experience designing or analyzing rail cars.” Id. (citing Ex. 2035 ¶¶ 34, 38). The parties agree that one of ordinary skill in the art “would have had at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years 5 Because Patent Owner statutorily disclaimed claim 1, this ground is moot. Patent Owner, however, disagrees that the experience should include designing or analyzing “similar vehicles.” Prelim. Resp. 12. At this stage, for the reasons below, limiting the ordinary skill in the art to “at least two years of experience designing or analyzing rail cars” does not affect our analysis of the parties’ dispute or our determination that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Thus, based on the preliminary record, we adopt Petitioner’s proposed level of ordinary skill to determine whether review should be instituted.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge would not.” Prelim. Resp. 12–13 (citing Ex. 2035 ¶ 39). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we need not construe expressly any claim term to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“been obvious over the 1946 Cyclopedia and Wong. Weighing the parties’ arguments and evidence, we find Petitioner provides sufficient rational underpinning for its assertion that it would have been obvious in view of Wong to implement a cross-wise extending beam to reinforce the 1946 Cyclopedia’s NSC ore car’s end slope sheet. Pet. 52–53; Prelim. Resp. 28– 30. In response to Petitioner’s assertion that “[t]he upper, outboard end of [Wong’s slope sheet 26] is reinforced by a cross-wise, L-shaped beam positioned under the slope sheet,” Patent Owner argues that “Wong does not provide reinforcement, but simply shows two sheets being connected for lading containment and load transfer.” Pet. 52; Prelim. Resp. 29. At this stage, we find Petitioner has the better position. Although we agree with Patent Owner that Wong shows two sheets connected to one another, that does not negate Petitioner’s correct observation that Wong shows an upper end of its end slope sheet 26 resting on an L-shaped structure, which apparently would reinforce end slope sheet. Pet. 52; Ex. 1003 ¶ 56. reason to look to Wong in the first place,” we again find that Petitioner has the better position at this stage. Prelim. Resp. 29. For example, Wong’s disclosure of “hopper railcar 10” (Ex. 1006, 3:6–9) and the 1946 Cyclopedia’s disclosure of “Freight Cars: Hopper Ore” (Ex. 1004, 27–28; Ex. 1054, 27–28) support Petitioner’s position that “Wong and the 1946 Cyclopedia are in the same field.” Pet. 52; see also id. at 76 (“Wong discloses a rail road hopper car (‘hopper railcar’ 10)”), 18–19 (“The ore-car section of the 1946 Cyclopedia—entitled ‘Freight Cars: Hopper Ore’— contains drawings and a photograph of an ore car manufactured by Patent Owner NSC.”); Ex. 1003 ¶ 56 (“Wong and the 1946 Cyclopedia are in the same field of hopper railcars”) (citing Ex. 1004, 27–28; Ex. 1006, code [57]). This position is not persuasively rebutted by Patent Owner’s argument that Wong’s hopper railcar 10 uses aluminum and steel together for certain reasons. Prelim. Resp. 28–29.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,166,892 - PTAB · Dec 16, 2025 · IPR2025-01047 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–44 on all presented challenges, finding a reasonable likelihood that FreightCar would prevail on at least one claim based on Hart, the 1906 Cyclopedia, and Wong.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–44 of the ’515 patent on all presented challenges. 37 C.F.R. § 42.108(a) (2024) (“When instituting . . . 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.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that one of ordinary skill in the art “would have had at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years of experience designing or analyzing rail cars.” Pet. 29; Prelim. Resp. 9. Patent Owner, however, disagrees that the experience should include designing or analyzing “similar vehicles.” Prelim. Resp. 9. At this stage, for the reasons below, limiting the ordinary skill in the art to “at least two years of experience designing or analyzing rail cars” does not affect our analysis of the parties’ dispute or our determination that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Thus, based on the preliminary record, we adopt Petitioner’s proposed level of ordinary skill to determine whether review should be instituted. Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge of rail cars would not.” Prelim. Resp. 9–10 (citing Ex. 2035 ¶ 35). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge of rail cars would not.” Prelim. Resp. 9–10 (citing Ex. 2035 ¶ 35). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to further support the upper, outboard end of the slope sheet with a crosswise, L-shaped beam as in Wong,” and one of ordinary skill in the art would have been motivated to do so, because of “the benefits of reinforcing the slope sheet at its upper end, where its connection with another structure creates a stress concentration.” Pet. 63 (citing Ex. 1003 ¶ 108). Petitioner points to Hart’s transverse beam b3 and argues that it suggests using a transverse beam like Wong if Hart is modified so that upper beam b3 no longer supports the slope sheet. Id. (citing Ex. 1008, Fig. 1). Petitioner also argues that the references are in the same field and that there would have been a reasonable expectation of success. Id. at 63–64 (citing Ex. 1003 ¶ 108; Ex. 1008, Fig. 1). Based on the preliminary record, Petitioner shows that its proposed combination of Hart, the 1906 Cyclopedia, and Wong teaches or suggests the above-quoted limitations of claim 24 and that one of ordinary skill in the art would have combined those references in the manner asserted with a reasonable expectation of success.” slip op. at 19
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,132,515 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.All claims unpatentablePTAB · Dec 2, 2025 · IPR2024-00928 · APJ Neil T Powell · IPR · Final written decision
Claims 1–5, 11–13, and 16–18 are unpatentable as obvious over Schröder and Yuen, LeBoeuf, or LeBoeuf and Wissmar; Schröder alone did not render its challenged claims unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 14. 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 ’034 patent and the references cited in the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner has the better position, as we agree with Petitioner that the ’034 patent discloses an embodiment that uses transparent potting as a window, rather than to form the overall form factor and encapsulate components: [Figure] 16C is a perspective view of the WCD with potting material 1630. As described above, the PCB, battery, and components can be disposed within the space. Once disposed therein, a potting 1630 can be provided atop the components and within the cutaway portion 1616. The potting 1630 can be transparent to allow for transmission of light through the cutaway portions 1616. Ex. 1001, 20:51–57. This configuration is shown below in Figure 16C. “[Figure] 16C is a perspective view of the WCD with potting material.” Ex. 1001, 6:1–2. As Figure 16C shows, potting material 1616 forms a window in only a portion of the WCD’s exterior. can be used to encapsulate components and form the overall form factor in some embodiments. E.g., Ex. 1001, 17:4–8, 18:61–62. But Patent Owner does not persuade us that claim 12 is limited to those embodiments. PO Resp. 29; SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). Accordingly, we do not construe claim 12’s “external transparent potting” as requiring material that “forms the ‘overall form factor of the WCD 120, in addition to providing a housing for one or more electronic components,’” as suggested by Patent Owner. PO Resp. 29. Nor do we construe the claim language as requiring material that “also fills the space and encapsulates the components,” as suggested by Patent Owner. Id.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position. Although Schröder describes some aspects that are similar to those of a printed circuit board, Petitioner has not sufficiently demonstrated that a person having ordinary skill in the art would understand Schröder’s inlay 12 or carrier foil to be a “printed circuit board,” as recited in independent claims 1, 11, and 16. As an initial matter, while Schröder refers to a “circuit board” in another context, it never refers to the carrier foil or inlay in its finger-ring embodiment as such. See Ex. 1007, 22:48–49; see also Ex. 1079 ¶ 21 (Dr. Anthony acknowledging that Schröder’s only reference to a “circuit board” is “unrelated to Schröder’s finger-ring teachings”). Instead, Schröder describes features of that inlay, explaining that “[t]he carrier foil itself consists of a flexible plastic material, e.g.[,] PET or Kapton” and “antenna coil 8 can for example be printed on the carrier foil by means of a conductive paste” and “a depression is manufactured in the carrier foil, e.g.[,] by milling, lasering, etching, before the chip module 10, the antenna coil 8 and optional further electronic devices are inserted into the depression.” Ex. 1007, 13:26–31, 13:35–37. Schröder further describes that “[a]t least one further foil can be applied to the carrier foil or the ring blank on at least one side” to produce a “multilayer foil composite” that can be “interconnected” by means of “glue” slip op. at 23
- Expert testimonyPetitioner expert discountedOther
“show that Schröder’s inlay 12 is a PCB. Relying on testimony from Dr. Anthony, Petitioner asserts that Schröder’s inlay 12 serves as a flexible carrier made of materials “commonly understood to be printed circuit board materials” such as PET and Kapton. Pet. 23 (citing Ex. 1002 ¶ 172; Ex. 1006, 12:28–29). Dr. Anthony did not provide a clear explanation of a person of ordinary skill in the art’s understanding of a PCB in his direct testimony. article describing a PCB as a “laminated sandwich structure of conductive and insulating layers” was an accurate description of a PCB: Q. So is the first sentence of this Wiki page, in your mind, an accurate description of a printed circuit board? A. So, the first sentence, “A printed circuit board (PCB)[] also called [a] printed wiring board, []is a laminated sandwich structure of conductive and insulating layers, each with a pattern of traces, planes, and other features (similar to wires on a flat surface) etched from one or more sheets of copper laminated onto or between sheet layers of nonconductive substrate.” And so your question again was? Q. Is that a fair definition of printed circuit board in your mind? A. It’s a fair description of the general process for circuit boards, layers of conductive traces.” slip op. at 21
Patent outcomesUS 9,582,034 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,582,034 - 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 - Texas Instruments Incorprated v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00934 · APJ Michael R Zecher · IPR · Final written decision
Claims 19–21 are unpatentable as obvious over DeMaw and, separately, over Macnally.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“1. Principles of Law A claim is unpatentable under § 103(a) if the differences between the” slip op. at 16
Patent outcomesUS 7,496,342 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,496,342 - Google LLC v. Eyesmatch Ltd.Some claims unpatentablePTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23
Patent outcomesUS 8,982,110 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Eyesmatch Ltd.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00810 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4. Thus, on the whole, Petitioner’s shifting, scattered arguments do not persuasively address limitation 1[f]. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Haan and Francois. And Petitioner’s arguments and evidence addressing claims 2–6, 10–12, 16, and 17 do not cure the foregoing deficiencies in the challenge of claim 1. Pet. 46–52. Accordingly, Petitioner has not shown by a preponderance of the evidence that any of claims 1–6, 10–12, 16, and 17 would have been obvious over Haan and Francois.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to correct image distortions and provide a more realistic mirror image.” Pet. 52–55; Ex. 1003 ¶¶ 242–249. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 35, 38–39 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009)). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations. In sum, we find for the reasons given that Petitioner has demonstrated by a preponderance of evidence that to a person of ordinary skill, Rosenberg alone or with Park teaches or suggests limitation 1[f].” slip op. at 44
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“shows by a preponderance of the evidence that limitations 1[c] and 1[e] are taught or suggested by Rosenberg and Park, in combination. Pet. 58–64; PO Resp. 39–40; Reply 19–20; Sur-reply 19. Petitioner persuades us that limitations 1[c] and 1[e], would have been obvious over Rosenberg and Park, in combination. Pet. 58–64; Reply 19–20. Patent Owner’s counter arguments are unavailing for multiple reasons. Patent Owner’s arguments fail because they improperly attack Rosenberg’s teachings individually, rather than addressing Petitioner’s combination of the references. PO Resp. 39–40; Sur-reply 19. This is fatal to Patent Owner’s arguments. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Petitioner presents persuasive arguments and evidence that the references, in combination, teach limitations 1[c] and 1[e], including persuasive evidence that the references’ tilting, resizing, and zooming meet the claim limitations’ “adaptive transformation mapping . . . to generate modified images that appear to be captured from a different point of view” that “corresponds to an image taken from a different angle and a different distance.” Pet. 58–64 (citing Ex. 1001, 3:26–28; Ex. 1003 ¶¶ 65–67, 253–268; Ex. 1006 ¶¶ 26–28, 50, 52, 61, 75 ; Ex. 1011 ¶¶ 50–51, 59, Figs. 6A–6B, 7, 8, 14, 15; Ex. 1019, 16–20; Ex. 1021, 2:19–27, 17:19–24, 21:60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Reply 19–20 (citing Ex. 1003 ¶¶ 253–268; Ex. 1021, 17:17–23; Ex. 2012, 63:13–22, 111:13–21). Regarding tilting, after noting the ’110 patent’s disclosure (incorporated from the ’109 patent) of performing tilt transformations (Pet. 10–11), Petitioner advances persuasive evidence that Park discloses such a tilting transformation, thereby teaching the claimed “different angle” (id. at 61–63). Regarding resizing and zooming, citing extensive discussion in the ’110 patent (incorporated from the ’109 patent) of resizing and/or zooming to address the effects of varying distance between an object and a camera, Petitioner and Dr. Karam explain that the prior art’s zooming and resizing meet the claimed “different distance.” Pet. 63 (Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Ex. 1003 ¶ 265 (citing Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11). In its counterarguments, Patent Owner suggests that zooming and resizing do not account for “occlusion effects,” but Patent Owner does not persuasively tie this argument to the ’110 patent, failing to cite any portion of the ’110 patent that evinces its invention addresses such effects. PO Resp. 23–25, 39–40.” slip op. at 39
Patent outcomesUS 8,982,110 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110
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.