- Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Oct 21, 2025 · IPR2024-00745 · APJ Russell E Cass · IPR · Final written decision
Claims 45–47, 51, 59, 60, 68, and 69 are unpatentable; claims 56 and 57 are not shown unpatentable. Substitute claims 85–88 and 91 are unpatentable; amendment is granted for claims 92 and 93.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of 3 Patent Owner does not present objective evidence of nonobviousness. skill reflected in the specification of the ’474 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no formal constructions are presently necessary,” and that it “maps [the] prior art in this Petition in a manner consistent with Patent Owner’s allegations of infringement before the district court.” Pet. 8 (citing Ex. 1017; Ex. 1003 ¶¶ 21–25). Patent Owner states that it believes there is no need to construe any terms of the challenged original claims because there is no underlying controversy regarding any claim terms. PO Resp. 10. For purposes of this Decision, we determine that it is not necessary to provide an express construction of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine Buibas and Sinyavskiy Petitioner argues that “it would have been obvious to partition Buibas’[s] spiking networks according to the specific techniques disclosed in Sinyavskiy” for multiple reasons. Pet. 13 (citing Ex. 1005 ¶¶ 71–72, 85, 92, 179–203; Ex. 1006 ¶¶ 12, 185, 188, 191, Fig. 6A; Ex. 1003 ¶ 63). First, Petitioner asserts, one of ordinary skill “would have been motivated to partition Buibas’[s] spiking neural network as suggested by Sinyavskiy to parallelize task execution on the robot and improve learning capabilities (e.g., through faster learning, greater computing efficiency, and task-specific learning models) of the Buibas mobile robotic apparatus as described by Sinyavskiy and discussed by Dr. Janet.” Id. (citing Ex. 1003 ¶ 64). Second, Petitioner contends, “partitioning Buibas’[s] robotic brain as suggested by Sinyavskiy would have beneficially expanded the range of tasks that the robot could perform by dedicating partitions to specialized tasks.” Id. at 13– 14 (citing Ex. 1006 ¶¶ 12, 185, 188, Fig. 6A; Ex. 1005 ¶¶ 71–72, 85, 92, 179–205; Ex. 1003 ¶ 65). Third, Petitioner argues, one of ordinary skill “would have been motivated to partition Buibas’[s] spiking neural network as suggested by Sinyavskiy to permit unused partitions or unused resources in the partitions to be reassigned for different tasks,” which would allow for a network processing apparatus that has increased processing capability for the same network capacity while also having a lower cost, size and power consumption. Id. at 14 (citing Ex. 1006 ¶¶ 190–192, 105, 34, code (57); Ex. 1003 ¶ 66). Fourth, Petitioner argues that “Buibas briefly mentions that its spiking neural networks can be partitioned but discloses little detail about the partitioning,” which would invite one of ordinary skill to turn to other references, such as Sinyavskiy, for additional detail on how to implement partitioning. Pet. 14–15 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 67). Fifth, Petitioner asserts, combining Buibas and Sinyavskiy would merely “involve[] the application of known techniques (e.g., Sinyavskiy’s partitioned neural network) to a known system (e.g., Buibas’[s] mobile robot and robotic brain) to yield predictable results (e.g., Buibas’[s] robot using a spiking neural network partitioned as taught in Sinyavskiy),” particularly because “the partitioning of the Buibas neural network is reminiscent of Recurrent Fuzzy Neural Networks (RFNNs) that were already commonplace at the end of the 1990’s.” Id. at 15 (citing Ex. 1003 ¶ 68). Finally, Petitioner contends, the proposed combination merely involves “use of known techniques (e.g., Sinyavskiy’s partitioned neural network) to improve a similar system (e.g., Buibas’[s] mobile robot and robotic brain).” Id. (citing Ex. 1003 ¶ 69). Petitioner further argues that one of ordinary skill “would have reasonably expected success implementing the combination, especially as Buibas and Sinyavskiy describe highly similar systems involving spiking neural networks used for training/operating robots.” Pet. 15–16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). Indeed, Petitioner contends, “Buibas itself confirms that its spiking neural network can be partitioned, while Sinyavskiy provides the details for doing so.” Id. at 16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner and Dr. Saber that these “weights” are numerical values associated with connections among neurons, and the “weight vectors” are merely lists of weights. PO Resp. 13–14; Ex. 2001 ¶¶ 66–67. When input is provided to the neural network, the network uses the weights of its connections in a feedforward calculation manner to provide an output that can include an instruction for operating a device. Ex. 2001 ¶ 66. We agree with and find credible Dr. Saber’s testimony that Buibas’s merging of weights or weight vectors results in updated network weights, and does not, by itself, disclose the merging of instruction sets for operating a device, or the correlation of the same set of inputs for all or a portion of a circumstance representation with instruction sets for operating two different devices. Ex. 2001 ¶¶ 65, 67, 69–71.” slip op. at 39
Patent outcomesUS 11,663,474 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,663,474 - Cellco Partnership D/B/A Verizon Wireless / Verizon Corp. Servs. Grp. Inc. et al. v. Headwater Partners I LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00809 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1, 2, and 6–18 as obvious over Limont, Wright, and Xu; claims 3–5 as obvious over those references and Polson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have been familiar with the changing of configuration settings of end-user devices to control access of the device to network data services, and storing those configuration settings in a protected partition” and “would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience.” Pet. 7–8 (citing Ex. 1003 ¶¶ 41–43). For institution, we adopted Petitioner’s proposed level of ordinary skill. Inst. Dec. 15. Patent Owner does not challenge Petitioner’s proposal. PO Resp. 6–7 (citing Pet. 7–8). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have been familiar with the changing of configuration settings of end-user devices to control access of the device to network data services, and storing those configuration settings in a protected partition” and “would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience.” Pet. 7–8 (citing Ex. 1003 ¶¶ 41–43). We find that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’042 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that claim terms be given their plain and ordinary meaning “because the prior art relied on in this Petition meets each claim term under any reasonable construction.” Pet. 7. For institution, we preliminarily adopted Patent Owner’s proposed interpretation of “network data service” to mean “a service that provides network data.” Inst. Dec. 17 (citing Ex. 1001, 1:48–49; Ex. 2001 ¶ 30). Patent Owner responds “that ‘network data service’ is a term of art, and refers to a service in which access to network data is provided.” PO Resp. 7 (citing Ex. 2032 ¶¶ 33–51, 56–59). Patent Owner argues that “data” refers to “data accessibility (i.e., a data plan or data connectivity), as opposed to other types of network services (such as network SMS service or network voice service)” and, therefore, “‘network data service’ refers to connectivity to an access network such that data service can be used (i.e., network data provided by a network data service provider), rather than specific services that might make use of such network data services (such as a content service provider like a webpage provider).” Id. (citing Ex. 2032 ¶ 34). Patent Owner also argues with citations to the record that its proposed interpretation is consistent with intrinsic and extrinsic evidence, including patents assigned to Petitioner. Id. at 9–18. Petitioner replies that Patent Owner’s “new restrictive, exclusionary” interpretation should be rejected because it lacks support in the record, and that one of ordinary skill in the art would not have understood the term to be so restricted. Pet. Reply 1–2 (citing Ex. 1001, 5:4–20; Ex. 1028 ¶¶ 39–42, 44–49), 5, 12–14 (citing PO Resp. 13; Ex. 1001, 5:4–20), 17–18 (citing PO Resp. 15–18; Ex. 1028 ¶¶ 71–77; Ex. 2033; Ex. 2037, 1:66–2:5). Petitioner type of service provides for specific network data service to a particular ‘destinations, URLs or addresses on a network.’” Id. at 7 (citing Ex. 1028 ¶ 50). Petitioner also argues that Patent Owner fails to provide analysis for adopting its new proposed interpretation, the asserted prior art still meets the interpretation, and there is no lexicography or scope disavowal. Id. at 2, 11– 12 (citing PO Resp. 7, 10–13; Ex. 1001, 5:11–20), 15 (citing Ex. 1028 ¶¶ 63–69), 14 (citing PO Resp. 3–4, 11–12). Petitioner further addresses Patent Owner’s asserted extrinsic evidence. Id. at 17–18 (citing PO Resp. 15–18; Ex. 1028 ¶¶ 71–77; Ex. 2033; Ex. 2037, 1:66–2:5). Petitioner also replies that Patent Owner could have, but did not,” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Petitioner argues that Limont, Wright, and Xu each “teach[es] the same subject of managing and updating secure data, including policies, wirelessly on mobile devices,” and because of their similar identification of problems and proposed solutions, one of ordinary skill in the art would have Ex. 1003 ¶¶ 264–267), 20 (citing Ex. 1003 ¶¶ 278–287; Ex. 1004 ¶ 13; Ex. 1005 ¶ 9). Petitioner also argues that the citing of Wright during prosecution of Limont supports that the ordinarily skilled artisan would have considered Limont and Wright to be closely related. Id. at 19–20 (citing Ex. 1003 ¶¶ 268–277; Ex. 1013, 140–141, 145–148, 229–230). Patent Owner does not present any arguments regarding analogous art. See PO Resp. Based on the full record, we determine that Limont, Wright, and Xu are analogous art. Pet. 19; Ex. 1003 ¶¶ 264–287; Ex. 1004 ¶ 13; Ex. 1005 ¶ 9; Ex. 1013, 140–141, 145–148, 229–230.” slip op. at 32
Patent outcomesUS 9,198,042 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,042 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - Visa Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 29, 2025 · IPR2024-00490 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 3–8, and 10–16 are unpatentable over Oborne or Oborne and Purves; claims 2, 9, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 74–79). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Inst. Dec. 15. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Inst. Dec. 11.” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We have considered Petitioner’s arguments and Dr. Shamos’s testimony in light of Oborne’s disclosure, but find Patent Owner’s arguments and Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See, Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that, contrary to Petitioner’s position, “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for the second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. See Pet. 34–35; Ex. 1005 ¶ 228. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of “device fingerprinting” is limited, and does not describe how it would be implemented for a user with two devices. See PO Resp. 41–42. Therefore, Dr. Shamos’s cited Declaration testimony is “conclusory, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize the application of “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. However, we “must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (emphases added) (internal quotations omitted). Although Stafford discloses that the key signatures may be copied from the display or delivered to the user via email, Petitioner does not expand upon whether the user would also copy the image from the display, whether the image would be provided via email as well, or provide any other explanation other than that the image credential would be provided with the scannable key signatures. Ex. 1012 ¶¶ 97, 99; Pet. 60. Although a credential image would presumably need to be retrieved or generated in some manner, and associated with the key signatures in some manner, Petitioner also does not sufficiently explain how this would work in the proposed combination, or how the user would transmit the scannable key signature to the recipient. Although proof of physical or bodily incorporation is not required, a satisfactory explanation of “how the combination of the . . . references [is] supposed to work” is necessary to support “a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (finding no error where the Board required petitioner to explain how a person of ordinary skill in the art would have implemented petitioner’s proposed substitution). Petitioner fails to provide “a clear, evidence-supported account of the contemplated workings” of the proposed combination of Stafford and Purves. See Personal Web, 848 F.3d at 994.” slip op. at 62
Patent outcomesUS 11,329,973 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,329,973 - Samsung Electronics Co. Ltd. / Google LLC et al. v. Headwater Research LLCAll claims unpatentablePTAB · Jul 23, 2025 · IPR2024-00341 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–17, 19, 21–27, 29, and 30 are unpatentable as obvious over TS-23.140 and Ogawa.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the full record, we find that Patent Owner’s proposed level of ordinary skill in the art is consistent with the ’733 patent and the asserted prior art. PO Resp. 5 (citing Ex. 2001 ¶¶ 29–31). We agree with Petitioner that Patent Owner’s proposal is encompassed by Petitioner’s proposed level of ordinary skill in the art. Pet. Reply 4. Our analysis below would not change, if we used Petitioner’s proposal.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the full record, we do not need to interpret expressly any claim term. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“o) Objective Indicia of Non-obviousness Patent Owner does not present any arguments or evidence regarding any objective indicia of nonobviousness for any of the challenged claims. See PO Resp.” slip op. at 49
Patent outcomesUS 8,406,733 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,733 - Visa, Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 21, 2025 · IPR2024-00486 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 3–6, 8–18, and 21–33 are unpatentable as obvious; claims 2, 7, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 89–94). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of these fields.” Id. We adopted this proposed level of skill for the Institution Decision. See Dec. 6– 7. Patent Owner agrees with this definition of the level of ordinary skill in the art. PO Resp. 8 (citing Ex. 2009 ¶¶ 37–41). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’531 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Dec. 9. We also explained that we did not need to determine whether the term “OVER file” 8 necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file” for purposes of institution. Id. We also determined that Petitioner had made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” Id. at 10, 23–27. In its Response, Patent Owner states that no construction of “OVER file” is required and that “the claims may be confirmed under the Board’s construction.” PO Resp. 9 (citing Ex. 2009 ¶¶ 43, 46–48). In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Pet. Reply 1–2 (citing PO Resp. 54). “For example,” Petitioner asserts, “verification in subsequent claim elements involves a scan associated with the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Dec. 9.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner has provided sufficient articulated reasoning to support the rationale for the combination of Oborne and Purves for the teaching of the limitation “requesting the credential.” As Petitioner points out (Pet. Reply 15), in the discussion of claim 23, the Petition refers to claim 22, which requires “generat[ion] of the credential.” IPR487, Pet. 37; see also Ex. 1005 ¶ 301. That discussion explains that a person of ordinary skill in the art would be motivated to combine Oborne and Purves because “the teachings of Purves would be recognized as useful to add new credentials to the digital wallet of Oborne’s PPT apparatus (for example, where a user had not yet added any credentials, or where adding further credentials were desired).” IPR487, Pet. 35 (citing Ex. 1005 ¶ 295). Dr. Shamos testifies that the credential that Purves teaches is a new gift card or reloadable prepaid card. Ex. 1005 ¶ 294 (citing Ex. 1013 ¶ 83). The Petition explains that a person of skill “would generate the new credential,” as Purves teaches that a customer may obtain a new gift card or prepaid card. IPR487, Pet. 37 (citing Ex. 1013 ¶ 83). Dr. Shamos testifies that “when the processor determines that no matching credential is stored” “a new credential would be generated because “the purpose of Oborne’s tokens is to represent a credential” and “by generating the new credential, the user becomes able to benefit from 9 We note that Patent Owner does not assert that there would be any security concerns with the combination of Oborne and Purves under this ground, which is based on the Purves’ embodiment concerning requests for a gift card or prepaid card credential. See PO Resp. 48–50. 49 Oborne’s tokenization system, and if the credential was already stored, there would be no reason to generate it, since it would already exist.” Ex. 1005 ¶ 298. For claim 23, which “requests the credential from the issuing agency,” Dr. Shamos further testifies that “when new credentials were generated upon user request, such as the gift and prepaid cards taught by Purves. . ., it would be natural for the issuer to store such new credentials, at least until they were sent to the recipient, and more practically for as long as they remained valid, so that the issuer’s system would confirm their existence and validity.” Id. ¶ 304. Patent Owner does not present any arguments challenging the sufficiency of Petitioner’s showing as to claim 22. As explained for claim 22, Petitioner relies upon Purves to teach the generation of a credential like a gift card or reloadable prepaid card, which would be useful to have as a credential in Oborne, and Patent Owner does not dispute this rationale. IPR487, Pet. 35; see generally PO Resp. As Petitioner also explains, a user would want to store credentials like a gift card or reloadable prepaid card in Oborne’s PPT, at least until they were sent to the recipient, “and more practically for as long as they remained valid, so that the issuer’s systems could confirm their existence.” IPR487, Pet. 38. As Dr. Shamos testifies, this is taught by Purves’ disclosure of retrieving the user’s “payment account information from the payment account issuer,” with user’s consent, and the issuer responding with information for data for establishing a virtual wallet including a “payment account in a virtual wallet.” See Ex. 1005 ¶ 301 (citing Ex. 1013 ¶¶ 83, 107–108 (“The user may then indicate that they desire to add a new payment account to their virtual wallet”)). Accordingly, 50” slip op. at 49
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We also find Dr. Malek’s testimony on this point more persuasive than Dr. Shamos’s testimony. See Ex. 2009 ¶¶ 165–170; Ex. 1048 ¶¶ 35–39; 72 Pet. Reply 27–28 (citing Ex. 1048 ¶¶ 55–60). For example, Dr. Shamos testifies that the combination’s use of obscured credential images would not “have risked exposure of the key signatures themselves since the image does not depict or otherwise convey the key signatures.” Ex. 1048 ¶ 37. However, although Petitioner fails to sufficiently explain the proposed combination, as discussed above, presumably there is some relationship between the credential image and the key signatures, since the proposed combination purportedly allows for the user to identify items that were previously selected for release, in order to provide the relevant key signatures to the recipient. Pet. 62–63; Ex. 1005 ¶ 367; Ex. 1048 ¶ 33. In contrast, Dr. Malek testifies, and we agree, that providing an unencrypted image of a credit card, for example, would inform potential attackers of the payload of the credential that is being attempted to be securely transmitted which is a security vulnerability. Ex. 2009 ¶ 169. Although Dr. Shamos testifies that Purves teaches associating wallet items with obscured or representative images and that such representative images were routinely used in virtual wallets, Ex. 1048 ¶¶ 35, 38 (citing Ex. 1013 ¶ 85), we do not find this persuasive in the context of the proposed combination with Stafford’s system for securely storing, transmitting, and authenticating credential information relating to an entity, with use of key signatures. Ex. 2009 ¶ 160; Ex. 1012 ¶ 2. Accordingly, Petitioner’s generic reasons for the proposed combination, coupled with Petitioner’s lack of specificity as to the proposed combination, leads us to determine that Petitioner’s reasons explaining why a person of ordinary skill in the art would have combined Stafford and 73 Purves are not persuasive in light of the teachings of those references and the testimonial evidence provided by Dr. Shamos, as discussed above. Further, as also discussed, the prior art fails to teach an “OVER engine” as claimed. Therefore, Petitioner has not established by a preponderance of the evidence that the claims 1, 15, and 21 are unpatentable over Stafford and Purves. We determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 3–5, 7–14, 16, 18–20, 22–26, and 28–33, which depend from claims 1, 15, and 21, are unpatentable over Stafford and Purves. Further, we have reviewed Petitioner’s showing for the obviousness of claims 2, 6, 17, and 27 over Stafford, Purves, and Neafsey (Pet. 79–81), and the argument and evidence presented fail to remedy the deficiencies of the associated independent claims. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 2, 6, 17, and 27, are unpatentable over Stafford, Purves, and Neafsey.” slip op. at 72
Patent outcomesUS 9,251,531 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,251,531 - Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00287 · APJ Norman H Beamer · IPR · Final written decision
Claims 9–12, 14–16, and 22–24 are unpatentable under § 103 over Riepling and Meisels, or Riepling, Manzano, and Meisels; claim 13 was disclaimed.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. We apply Petitioner’s articulation.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“construction of “representation of the at least one file.” Petitioner is correct that a representation of a file is not the file itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ʼ906 application, illustrated in the portion of Figure 6B reproduced below (highlighted here for purposes of explanation). This portion of Figure 6B depicts representations of two files: “FamilyHistory.docx” and “XmasLetter-2012.pdf.” The ’906 application specifically states: [A] located data resources dialog UI element 630b . . . includes a presentation space 632b for presenting a user detectable representation of some or all of the data objects identified in the received data object identification response from . . . second node 504. Ex. 2004 ¶ 147 (emphasis added). The entries in the above figure are representations of the files, not the files themselves. The actual files are stored in the file system storage associated with the user’s node, and only retrieved if the user selects the “Access” or “Access All” elements. Id. ¶ 148. Patent Owner misconstrues the claim 22 language, “a first representation of the at least one file, in a location among one or more folders, that is stored at the at least one server” and “a second representation of the at least one file, in a location among one or more folders, that is stored at the first node.” Patent Owner infers from this language that the representation is itself a file that is “in a location among one or more folders” and is stored on a server or at a node. PO Resp. 17. Not so — the representation of a file, such as “FamilyHistory.docx” in the above figure, is not stored at a server or node, but rather is simply displayed on a screen. As the ’906 application states: A representation of a program entity may be stored and/or otherwise maintained in a presentation space. As used in this document, the term “presentation space” refers to a storage region allocated and/or otherwise provided for storing presentation information . . . . A screen of a display, for example, is a presentation space.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; and (iv) the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Other than its arguments directed to ’520 claim requirement 9[l], discussed below in Section III.D.4.d), Patent Owner does not further address Petitioner’s arguments regarding the combination of Riepling and Meisels. As discussed in that section, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Riepling and Meisels in the manner argued by Petitioner.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We agree with Petitioner that set content field 325 of Riepling teaches or suggests claim requirement 9[b]. As Petitioner’s expert explains, the fact that field 325 has an appearance identical to that of fields 321–324 in Figure 3, which fields are specifically stated to be “text field[s],” strongly suggests that field 325 is also a text field. Mowry Decl. ¶ 70; see also Reply 10–11. Patent Owner’s suggestion that field 325 could be a dropdown list or other type of field is contradicted by the fact that it does not show the typical dropdown arrow associated with a dropdown box, or other typical non-textbox appearance such as the checkbox appearance of field 320. Moreover, in the example of Figure 3, the “Set Content” entry is “audio,” which is a file description. Reply 10. The fact that “JPEG” is checked in field 320 is not inconsistent with the “audio” entry in field 325, given that, as Riepling explains, “it may be possible for audio files such as MP3 files to contain non-MP3 data, such as JPEG data embedded within the MP3 files.” Id. at 11 (citing Ex. 1107 ¶ 32; Mowry 2nd Decl. ¶ ¶ 101–104). Also, there is no reason why the Figure 5 response that gives the uploader the ability to provide additional description of the file being uploaded is inconsistent with the ability of the requester first describing what type of file is being requested via field 325 in Figure 3. Id. at 11–12. Accordingly, for the reasons discussed above, we are persuaded that the record supports Petitioner’s arguments regarding claim requirement 9[b].” slip op. at 37
Patent outcomesUS 11,611,520 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentablePTAB · Jun 30, 2025 · IPR2024-00286 · APJ Norman H Beamer · IPR · Final written decision
Claims 17–21 are unpatentable under § 103 over Houston and Garcia; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We conclude that there is no basis for Patent Owner’s proposed construction of “representation of the at least one folder.” Petitioner is correct that a representation of a folder is not the folder itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ’635 application, illustrated in the portion of Figure 6D reproduced below (highlighted here for purposes of explanation). This portion of Figure 6D depicts representations of several folders, including the highlighted “Music” folder. The ’635 application specifically states: A folder content pane UI element 648d in navigation window UI element 646d is presented including representations of one or more data objects[11] at a location, identified in a path UI element 650d. A pointer UI element 652d illustrates a drag and drop operation of a “Music” folder represented in contents pane UI element 648d, dropped on edit window UI element 602d. Ex. 2004 ¶ 123 (emphasis added). The word “Music” in the above figure is a representation of a folder, not the folder itself. The actual folder is an entity in a file system that stores files (in the case of a “Music” folder, presumably MP3 or WAV files, or the like).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not need to rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — 14 For this argument and others, Patent Owner cites for additional support portions of U.S. Provisional Patent Application No. 61/233,787. PO Resp. 18, 42, 46; Sur-Reply 9–12. This application is designated in Houston as a related application, and incorporated by reference therein. Ex. 1003, code (60), 1:6–10. We denied as untimely Patent Owner’s request to belatedly add this application to the record. Ex. 3002; Paper 39. Even accepting Patent Owner’s representations of the relied-on disclosures in that application, those disclosures are cumulative to Houston’s criticisms of systems that store documents remotely, and are irrelevant for the same reasons as discussed herein with respect to those Houston disclosures. that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Id. at 40–41; Ex. 2045.15 Thus, Patent Owner’s argument that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared is not applicable to Petitioner’s challenges of claim 17–21, in light of our conclusion set forth above in Section III.C rejecting Patent Owner’s proposed construction of claim 17. The fact that the Houston system ensures the availability of synchronized local copies of files at each user’s local system and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, there is nothing about that particular difference in the approaches of Houston and Garcia that would support a finding that one of ordinary skill in the art would have been discouraged from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To give substantial weight to objective indicia of nonobviousness such as commercial success, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A patentee is entitled to a presumption of nexus “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.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[T]he patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Fox Factory, 944 F.3d at 1378. The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). “A finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations”; rather, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 994 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 125, 140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the [objective indicia] evidence presented in the context of whether the claimed invention as a whole would have been obvious to a skilled artisan.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 33 (PTAB Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331–32 (Fed. Cir. 2016)).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“However, as Petitioner argues above, Houston discloses that a client can provide an email to the server to invite others to share a folder, and Houston explains that “attaching files [to emails is] cumbersome for many computer users.” Pet. 25–26 (citing Ex. 1003, Fig. 4, 1:41–42, 3:40–43, 7:50–51). From this, Petitioner argues that it would have been obvious for the email invitation to notify how to access the folder, rather than sending the folder contents itself. Id. Petitioner further argues that the claim 17[d] requirement would have been obvious over the combination of Houston and Garcia given the disclosure in Garcia of sharing a folder by sending an email with a link to the folder, instead of an attachment. Id. at 27, 57 (citing Ex. 1004, Figs. 9, 11–12, 10:32–34, 10:38–40, 11:39–43, cl. 3). We are persuaded that the record supports Petitioner’s arguments regarding this claim requirement. Both Houston alone, and the combination of Houston and Garcia, teach or suggest sending an email with a link to a folder to be shared, rather than the folder contents. Only if the recipient clicks on the link are the contents of the folder shared. Ex. 1004, 11:29–31. The act of clicking on the link in the email after the email is received is the required “initiation of the communication” that must occur separately from the email itself, as required by claim 17[d]: “causing generation of at least one email [that] does not include a file attachment, for permitting avoidance of at least one file from being communicated to and stored at the second node until an initiation of the communication of the at least one file by a user of the second node is detected and the communication commences via at least one server that stores the at least one file” (emphasis added). It does not matter if Houston or Garcia automatically downloads local copies of files when a recipient clicks on the email link, because that is a separate step following the step of claim 17[d].” slip op. at 46
Patent outcomesUS 11,611,520 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,611,520 - PTAB · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678
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.