- PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01116 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success for the Ahn and Chaudhri obviousness challenge.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition second on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),5 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of two petitions in this situation, and because this Petition is ranked second, we do not reproduce that analysis here.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has sufficiently shown how Ahn teaches or suggests limitation 2.d of claim 2, and that the proposed combination of Ahn and Chaudhri teaches or suggests this limitation.” slip op. at 21
- Skill levelOther
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“blur[ring] . . . at least a portion of” an object, as recited in independent claims 2 and 225, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01117 · APJ Sharon Fenick · IPR · Institution
The Board discretionarily denied institution because this petition ranked fifth among seven parallel petitions challenging the patent.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01119 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1, 2, and 208–216 on all grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Ahn, Chaudhri, and Shiplacoff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition first on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),6 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of at least one petition in this situation, and because this Petition is ranked first, we do not reproduce that analysis here.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 4) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent claims 1 and 2, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 26–27 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - Adb Safegate Sweden AB / Adb Safegate BV et al. v. Honeywell International Inc.All claims unpatentablePTAB · Feb 12, 2025 · PGR2023-00053 · APJ James P Calve · PGR · Final written decision
Claims 1–20 are unpatentable under § 101; claims 1, 6–10, and 13–20 are also unpatentable over Berkmo, and claims 1–20 over Berkmo and Richman.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan would have “held at least a degree in electrical engineering, computer engineering, computer science or a similar discipline, with at least two years of relevant industry or research experience, including experience designing, planning, or implementing sensor networks using LIDAR, radar and/or cameras and corresponding data analysis” and “[a]dditional work or research experience can substitute for less or different education, and vice versa.” Pet. 10 (citing Ex. 1003 ¶¶ 18– 23). Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. PO Resp. 14. Having considered the record, we adopt Petitioner’s uncontested level of ordinary skill as articulated above. Petitioner’s description appears to be consistent with the prior art cited and the skill reflected in the Specification of the ’349 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We reject Patent Owner’s interpretation because it limits the claims to an exemplary embodiment that “can, for example, provide the remaining distance and the horizontal deviation with respect to the center line of a path” (Ex. 1001, 10:8–11), and it reads limitations of that embodiment into the claims. Absent a lexicographic definition or a disavowal, such claim interpretations are not permissible. See Phillips, 415 F.3d at 1312, 1316 (claims are given their ordinary, customary meaning in the context of the entire patent and the specification absent a lexicographic definition or a disclaimer or disavowal of claim scope by the inventor); Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’”) (citation omitted). Patent Owner has not asserted a definition or a disclaimer to support its interpretation. PO Resp. 16–17. The parties agree that “directional guidance” includes “navigational instructions” and “maneuvering guidance information.” PO Resp. 16 (“the claims make clear that this guidance refers to the navigational instructions to be provided to the pilot guiding the airplane”), 17 (a skilled artisan “reading the challenged claims in light of the specification would understand that ‘directional guidance’ refers to navigational instructions including the horizontal deviation with respect to the center line of a path”); Reply 21 (Berkmo teaches providing “pilot maneuvering guidance information . . . for aiding a pilot of the approaching aircraft towards [a] parking position”); Pet. 54 (Berkmo provides maneuvering guidance information). We interpret “directional guidance” as navigational instructions and maneuvering guidance information. This interpretation is consistent with the claims, which do not recite features of “directional guidance,” much less a horizontal deviation with respect to a center line as Patent Owner asserts.” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that the merging recites mental processes because the algorithms described in the specification (Ex. 1001, 8:50–9:10) can be performed as mental processes. Pet. 20–22; Reply 9–11; Ex. 1044 ¶¶ 56–58; Elec. Power Grp., 830 F.3d at 1351–52, 1353–54 (receiving time stamped synchronized phasor measurements at different points of an electric power grid and analyzing and updating the measurements in real time using limits, sensitivities, and rates of change of dynamic stability metrics derived from voltages, power flows, phase angles, damping, and oscillation modes recite mental processes); id. at 1354 (analyzing data by mental steps or mathematical algorithms is an abstract mental process). Merging data by transforming and converting it from one format to another is an abstract idea. See AI Visualize, Inc. v Nuance Commc’ns, Inc., 97 F.4th 1371, 1379 (Fed. Cir. 2024) (“But ‘converting information from one format to another . . . is an abstract idea.’” (citation omitted); creating virtual views in real time by “creating the requested frames of the requested views from the volume visualization dataset” created a virtual view from the existing volume visualization dataset as “abstract data manipulation”); Hawk Tech. Sys., LLC v. Castle Retail, LLC, 60 F.4th 1349, 1357 (Fed. Cir. 2023) (the method receives, displays, converts, stores, and transmits digital video data using result-based functional language); FICEP Corp. v. Peddinghaus Corp., No. 2022-1590, 2023 WL 5346043, *3–4 (Fed. Cir. Aug. 21, 2023) (the focus of the advance is on automating the identification, extraction, and transfer of a 3D rendering of an object by a CAD design model including dimensions and intersection parameters without specifying how intersection parameter data was generated or used to create a design model and therefore encompasses a human deriving intersection parameters and adding this data to the design model for extraction); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“[A] process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”) (quoting Parker v Flook, 437 U.S. 584, 595 (1978) (“If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.”)); MPEP § 2106.04(a)(2) (mathematical relationships include converting binary coded decimal numerals to pure binary numerals as did the claims in Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972)); see also Tr. 22:24–25:23.” slip op. at 20
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The ordered combination of elements recites no more than when the elements are considered individually and thus does not provide an inventive concept. We disagree with Patent Owner’s argument that “[w]hen considered individually or in combination with the other claimed elements, the reliance on this merged data from a camera and LIDAR/RADAR sensor is itself an inventive concept because it was not conventional and improves the technology of aircraft tracking and guidance.” PO Resp. 49–50. Merging data from two different sensors is part of the abstract idea and therefore cannot provide an inventive concept that makes that abstract idea patent eligible. See, e.g., BSG, 899 F.3d at 1291–92; Guidance at 56. “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290–91. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” Id. at 1290. Even if merging camera and LIDAR/RADAR sensor data is treated as an additional element, the description of the point cloud process and iterated point cloud algorithm indicates Patent Owner did not invent or improve the merging process. Ex. 1001, 8:64–9:40; MPEP § 2106.05(d)I.2. (a generic description indicates that elements are conventional enough that no further description is needed to satisfy § 112(a)); see AI Visualize, 97 F.4th at 1379 (converting data from one format to another is an abstract idea); Adaptive Streaming Inc. v. Netflix, Inc., 836 F. App’x 900, 903 (Fed. Cir. 2020) (encoding and decoding image data and converting data formats are abstract ideas). Dr. Campbell and Mr. Wilson testify that merging data is known for detecting and tracking objects and navigation. Ex. 1044 ¶¶ 41–51, 56–59; Ex. 1003 ¶¶ 54–65, 81–87; Ex. 1045, 20:6–23:18. A “data fusion process” is not claimed, much less one of any particular features. See PO Resp. 50. Nor do the claims recite a non-conventional arrangement of sensors. See Ex. 1003 ¶¶ 42–67, 83; iLife, 839 F. App’x at 538 (because sensors for measuring static and dynamic acceleration were known, and claim 1 did not recite unconventional means for processing that data, sensing and processing the static and dynamic acceleration information using generic components did not transform the nature of claim 1 into patent eligible subject matter).” slip op. at 39
Patent outcomesUS 11,538,349 unpatentableClaim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Phillips · KSR · GrahamPatents in suitUS 11,538,349 - PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). E. Alleged Obviousness” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,676,255 - PTAB · Jan 27, 2025 · IPR2024-01085 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Davis indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr. Cockburn. Ex. 2001 ¶ 24 (citing Ex. 1003 ¶ 26). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the level reflected by the ’580 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Similarly, Patent Owner indicates that no formal constructions are necessary at this point in the proceeding. Prelim. Resp. 3. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “Petitioner’s alleged motivation for modifying Ramos’ Zlider to be transparent is superficial and conclusory.” Prelim. Resp. 24; see generally Prelim. Resp. 24–26. As noted above, Petitioner relies on evidence from Ording itself and Dr. Cockburn’s testimony that relies on evidence to support its conclusion. Thus, we do not agree with Patent Owner that Petitioner’s motivation is insufficient for institution. Patent Owner also argues, relying on Dr. Davis’ declaration testimony, that the Vernier on a semitransparent Zlider widget would be “completely illegible” in some circumstances “rendering the very core of Ramos’ work unusable.” Prelim. Resp. 24–25 (citing Ex. 2001 ¶ 88); see Ex. 2001 ¶ 88 (not adding reasoning or evidence beyond that in the Patent Owner Preliminary Response). On this preliminary record, it would appear that when the Zlider widget and the portion of the image underlying the Zlider widget are the same color, the semitransparent Zlider widget may not work as well as when the Zlider widget and the underlying image are different colors. That does not outweigh, for purposes of determining whether to institute trial, the prior art evidence that Petitioner offers of the from Ording and other prior art references on which Dr. Cockburn’s declaration testimony relies. Ex. 1003 ¶ 66 (citing Ex. 1025 ¶¶ 77, 94, 101; Ex. 1026 ¶¶ 153, 162); see Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799– 800 (Fed. Cir. 2021) (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option, rather than a showing that it is the best option). Petitioner also contends, relying on declaration testimony from Dr. Cockburn, that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 33–34. Petitioner contends that implementing the Zlider widget “described in the Ramos Paper and Ramos Video in a device, as taught by Ording, would have required only routine knowledge well within the skill of a POSITA” and would involve “combining prior art elements according to known methods to yield the predictable results” described by Petitioner’s proposed combination of the references. Id. (citing Ex. 1003 ¶ 67). Petitioner’s support for reasons one of ordinary skill would have made” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,649,580 - Mercedes-Benz USA, LLC v. Daedalus Prime LLCAll claims unpatentablePTAB · Jan 24, 2025 · IPR2023-01344 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1, 3–7, 11–13, and 15–17 over Sinharoy; claims 2 and 10 over Sinharoy and Xu; and all challenged claims under the listed Tang grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“In the Institution Decision we determined Petitioner’s description was consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of that decision, we adopted Petitioner’s proposal in the Institution Decision. Inst. Dec. 10–11. Now Patent Owner argues for a “more precise definition” offered in the Horst Declaration and adopted in the Brogioli Declaration. PO Resp. 6–7 (citing Ex. 2002 ¶ 25). effects any patentability issue. The only difference between the two is the addition of “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems” as the experience level of a person of ordinary skill in the art. Compare Inst. Dec. 10–11 (citing Pet. 8) and Ex. 1007 ¶ 30 and Ex. 2001 ¶ 25. No mention of the difference between the two levels of ordinary skill is made in any of the papers filed. Regardless, inasmuch as both experts agree to the level of ordinary skill, we find the experience associated with the level of ordinary skill is “two years of experience working with multicore processor systems, central processing unit (CPU) , cache, and memory systems.” The level of education is unchanged from the Institution Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We are not persuaded to change our preliminary construction. First, Patent Owner misstates our construction of “single caching agent” by adding the language “each associated with a corresponding one of the plurality of cores.” That language is present in the claim as a separate limitation. See Section I.E (limitation [1g]) above. This added language is not present in our preliminary construction, which states only that a “single caching agent” means “one caching agent for the processor, which may be formed from distributed portions.” Inst. Dec. 12. Thus, that each “single caching agent” is “associated with a corresponding one of the plurality of cores” is a separate limitation. Second, none of the above citations to the ’895 patent is contrary to our construction. Our construction states that a “single caching agent” is recited. That is what is repeated in Patent Owner’s citations. Third, the ’895 patent’s description of Figure 6 explains that a “single caching agent” may be formed from distributed portions, as do the claim limitations in question. See Ex. 1001, 6:35–37. Other than tacking on the second recitation of “distributed portions” to the “single caching agent” portions” part of our construction is incorrect. The Brogioli Declaration repeats the above citations to the ’895 patent” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“In an IPR, the petitioner bears the burden of establishing by a preponderance of the evidence that a particular document is a printed publication.” Nobel Biocare Services AG v. Instradent USA, Inc., 903 F. 3d 1365, 1375 (Fed. Cir. 2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.” Medtronic, 891 F.3d at 1380 (citations, quotations, and alterations omitted). The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot. slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“The evidence of record supports our finding that Xu was publicly available at an IEEE conference occurring from November 14 through 15, 2011. Ex. 1013 ¶¶ 8–11, Ex. A (Xu). Xu has a copyright date of 2011 which, although not dispositive of the date of public accessibility, is relevant evidence of public accessibility at the conference. Ex. 1005, 1. Exhibit 1014 confirms the conference dates of November 14–15, 2011, which antedates the December 31, 2011, critical data that Patent Owner asserts for the ’895 patent (PO Resp. 26; see Reply 13–14) and the December 13, 2011, priority date of the ’895 patent (Ex. 1001, at code [63], 1:5–7). Ex. 1014. Whether or not Exhibit 1019 is hearsay or authenticated, the MacPherson Declaration and IEEE Explore evidence is sufficient to show that Xu was available at the November 14–15, 2011 conference. The Motion to exclude Exhibit 1019 is denied as moot.” slip op. at 41
Patent outcomesUS 9,575,895 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,575,895 - PTAB · Jan 22, 2025 · IPR2024-01090 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–3, 21, 29–31, 42–44, 54, and 62–65 based on the §103 combination of Blumenberg, Bhumkar, and Griffin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Patent Owner may bear a burden of production, however, to show that the Challenged Claims are entitled to the benefit of an earlier filing date. Id. at 1379–80.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we preliminarily agree with Petitioner that the claim limitations amount to a combination of known elements that a POSITA could have combined to achieve predictable results. See Intel, 21 F.4th at 799–800 (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option). Among other reasons, the preliminary record supports Petitioner’s arguments that combining the teachings of Blumenberg, Bhumkar, and Griffin amounts to applying known solutions in the field of computer interfaces with predictable outcomes. See Pet. 12–18. As noted above, we encourage the parties to address the scope and meaning of the “when” limitations as a matter of claim interpretation, but we do not currently understand the plain language of Limitation [1.o] to require that the “portion of the second web page” or “menu” is displayed only after expiration of the “second user-configurable predefined duration,” termed by Patent Owner the “Alternative Modification.” Again, we encourage the parties to fully address this issue as a matter of claim construction. We additionally note that, even if we were to interpret the claims to require that the recited functions of Limitation [1.o] occur only the “prerequisite elements” are satisfied, we are still preliminarily persuaded by Petitioner’s arguments that combined teachings of the prior art satisfy the claim elements as a mere combination of known elements combined according to their known functions with predictable results.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“scenarios. Pet. 1 (characterizing three claimed scenarios as (i) an “inadvertent” contact, (ii) a “tap” contact, and (iii) a “hold” contact), 4 (“Independent Claims 1 and 42 outline three scenarios regarding a user’s contact with a touch screen device”); Prelim. Resp. 3 (“With respect to claim 1, these three scenarios include: . . . .”); see Ex. 2001 ¶¶ 28 (“As recited in claim 1, the three different claimed functionalities are executed ‘when’ the prerequisite elements are met (described as three scenarios by Dr. Cockburn.”) (citing Ex. 1001, 102:50–103:55; Ex. 1003 ¶¶ 33–35), 29–32 (describing the first, second, and third scenarios). In substance, the parties’ dispute appears to concern whether the plain language of the claims requires that a recited function must be performed only after or in response to expiration of a threshold (and other prerequisites), as opposed to requiring a function that begins before and continues after expiration of a threshold. Notably, dependent claim 3 recites: “The electronic device of claim 1, wherein the electronic device is configured such that the first feedback that is perceptible by touch is output prior to the display of the menu.” Ex. 1001, 104:1–4 (emphasis added). Given that independent claim 1 is necessarily broad enough to include claim 3, it seems on this record that the functions recited in Limitation [1.o] necessarily can happen at different times, as opposed to, for example, only responses that are triggered by the so-called “prerequisite elements.” We encourage the parties to address this issue as a matter of claim interpretation in future briefing. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,725,581 - PTAB · Jan 16, 2025 · IPR2024-01088 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute inter partes review as to the challenged claims of the ’758 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (internal citations omitted) (citing Ex. 1003 ¶¶ 41–53). For the purposes of institution, Patent Owner did not dispute this level of skill. Prelim. Resp. 6 (“Patent Owner does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.”) The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” appears to be consistent with the problems and solutions in the ’758 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Pet. 7.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner also notes that in the pending District Court Litigation, Petitioner contends that eight claim terms found in the challenged claims are indefinite: “performing an operation [in connection with / on] the first application icon,” “application-launch criteria,” “action-option-display criteria,” “operation criteria,” “movement criteria,” “action options,” “action option objects,” and “evaluating the first single-finger touch input against at least one of a plurality of criteria, including evaluating a duration of the first single-finger touch input against at least one of: one or more application-launch criteria, one or more action-option-display criteria, or one or more operation criteria, and further including evaluating a movement of the first single-finger touch input against one or more movement criteria.” Prelim. Resp. 6–7 (citing Ex. 2003, 9–75). Patent Owner further notes that, contrary to its position in the pending District Court Litigation, Petitioner does not assert that any of these terms are indefinite in this proceeding. Id. For institution and on our present record, we determine that none of these claim terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need 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)). 3. Other Terms For institution and on our present record, no other claim terms require construction. See Nidec, 868 F.3d at 1017.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We determine that, on this record and for the purposes of institution, Petitioner has made a sufficient showing regarding motivation for its proposed combination of Chaudhri, Martyn, and Griffin. For the combination of Chaudhri and Martyn, we determine, on the present record and for the purposes of institution, that Petitioner has sufficiently shown support for the use of Martyn’s snap-shot menu with Chaudhri’s user interface. We acknowledge Patent Owner’s declarant’s examples of instances in which devices that incorporated “popular user interface features . . . did not achieve the same level of success because of poorly articulated design implementation.” Ex. 2001 ¶ 127 (cited at PO Resp. 23). However, on the present record, this evidence does not specifically address whether one of ordinary skill would have found such examples significant enough or relevant enough to the proposed combination to dissuade one of ordinary skill from considering such a combination to be reasonably likely to succeed, especially in light of the testimonial evidence before us that similar menus were often incorporated into GUIs similar to Chaudhri’s, which is adequately supported by reference to numerous examples. See Ex. 1003 ¶¶ 43–48, 64–65 (cited at Pet. 16). Additionally, we find compelling that Chaudhri describes a pop-up dialogue sub-menu for a different purpose (modifying the user interface object). See Ex. 1004 ¶¶ 274, 317, Figure 5LLL; Pet. 18–19; Ex. 1003 ¶ 69. On the present record, one of ordinary skill in the art would have found the use of the similar snap-shot menu from Martyn (offering different functionality) to be further prompted by this sub-menu, and not to have been redundant or “already solved” in Chaudhri, as Patent Owner argues (PO Resp. 26–27). See Pet. 18–19; Ex. 1003 ¶ 69. introduced to the combination of Chaudhri and Martyn to address a conflict that arises because Petitioner proposes a combination of Chaudhri and Martyn that “create[s] a conflict of assigning two functions to the same gesture.” PO Resp. 20. However, Petitioner provides a number of rationales to combine, and Petitioner’s argument that one of ordinary skill would have sought details from Griffin to implement Chaudhri’s teachings describing different user functionality being launched by user touches of different user durations (Pet. 19–21) adequately supports the use of the material from Griffin in the proposed combination. See Ex. 1004 ¶¶ 217, 218; Ex. 1002 ¶¶ 70–73, 75; see also PO Resp. 24 (describing “multiple types of gestures” used Chaudhri). While the proposed combination of Chaudhri and Martyn would, as Petitioner asserts, result in “three distinct operations invoked by duration-based touch gestures at an application icon” (Pet. 21), two of these distinct operations are found in Chaudhri’s teachings, and thus, on the present record, the motivation to look to Griffin does not arise only from the proposed combination of Chaudhri with Martyn. On the present record and for the purposes of institution, we determine that Petitioner has adequately shown that one of ordinary skill would have looked to Griffin to supply additional information regarding implementation of Chaudhri’s (and the Chaudhri and Martyn combination’s) use of parameters of a user’s touch, including duration, to enable different functionalities. Ex. 1006 ¶¶ 40, 53, Fig. 7; Ex. 1002 ¶¶ 70–73, 75. With respect to the use of the “press-and-hold” feature from Martyn, rather than other possibilities from Martyn for triggering its snap-shot menu and rather than adding a second touch point as Patent Owner suggests (PO Resp. 27–28, 32, 33 (citing Ex. 2001 ¶¶ 142–143, 156, 166, 172–173)), on to have been a suitable option. Pet. 15–16; Ex. 1003 ¶¶ 49–53, 63–64; Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (determining that a showing of the obviousness in “predictable use of prior art elements according to their established functions” (as per KSR, 550 U.S. at 417) requires only a showing that the combination be a suitable option, rather than a showing that it is the best option).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,758
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.