• Resmed Corp. v. Cleveland Medical Devices, Inc.No claims unpatentable
  PTAB · May 18, 2026 · IPR2025-00159 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–9, 11–14, and 16 were not shown unpatentable under either § 103 ground because Petitioner did not establish the proposed remote internet site modification.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner

    “Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name a real party in interest (namely, Petitioner’s corporate parent, Resmed Inc.). Paper 37. Petitioner filed an opposition. Paper 38. Patent Owner filed a reply. Paper 39. We denied the Motion to Terminate. Paper 44.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time the invention was made.8 See Graham, 383 U.S. at 17–18. The parties agree that a person of ordinary skill in the art (sometimes referred to herein as a POSITA) would have had: at least a bachelor’s degree in mechanical engineering, electrical engineering, computer science, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience working with diagnostic sensor systems and network data systems, such as networked PAP machines. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 12–13 (citing Ex. 1003 (Kirkness Decl.) ¶¶ 44–46); PO Resp. 7–8. Because the proposed level of ordinary skill in the art is consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 11

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

    “We find it unnecessary to construe any claim term to resolve the issues in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “its burden of explaining why a person of ordinary skill in the art would have implemented a remote internet site in Toge’s system in the specific fashion Petitioner asserts (i.e., using the physician-side computer as a web server). As Patent Owner aptly states, the operative question is not merely whether a person of ordinary skill in the art would have modified Toge’s system to include a remote internet site, but whether the artisan would have modified Toge’s system to include a remote internet site “on a physician’s client computer” in accordance with the specific implementation argued by Petitioner. Sur-reply 2. On this critical question, Petitioner’s arguments are thin. Petitioner’s declarant Dr. Kirkness states that a person of ordinary skill in the art “would have understood that one common way to access data transmitted over the internet, like the data from Toge’s wireless PAP device, is via a remote internet site.” Ex. 1003 ¶ 214. This assertion is reasonable. Indeed, prior art of record, such as Kumar, illustrates use of a central server that hosts a browser-based engine that can be accessed through web pages. See, e.g., Ex. 1008 (Kumar) Fig. 1A, ¶¶ 67, 72, 79, Pet. 10. Petitioner, however, elected to argue a specific implementation, namely that the skilled artisan would have modified Toge’s physician-side computer to operate as a web server. See, e.g., Pet. 15; Ex. 1005 (Chatterjee Decl.) ¶ 146; Reply 4. We find that this implementation is unsupported on this record. Petitioner has not pointed us to any disclosure in Toge, Burton, or Kumar (or any other prior art reference of record) that teaches or suggests “that a doctor’s computer should act a web server hosting sensitive patient data.” PO Resp. 9 (emphasis added). And critically, the Petition is silent as to why a person of ordinary skill in the art would have selected this implementation in particular. See, e.g., Pet. 49.” slip op. at 25

  Patent outcomesUS 11,375,921 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,375,921
• Tesla, Inc. v. Charge Fusion Technologies, LLCAll claims unpatentable
  PTAB · May 13, 2026 · IPR2025-00032 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 1–29 are unpatentable as obvious under §103 based on the asserted combinations of prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner submits that the ordinarily skilled artisan would have at least a bachelor’s degree in electrical or mechanical engineering (or an equivalent field) and at least two years of work experience involving automotive systems, including electric vehicle power management. . . . Additional industry experience or technical training may offset less formal education, while advanced degrees or additional formal education may offset lesser levels of industry experience. Pet. 2 (citing Ex. 1003 ¶¶ 30–32). Patent Owner “takes no position with respect to Petitioner’s proposed level of ordinary skill.” PO Resp. 17. For the purposes of our analysis below, we apply Petitioner’s proposed level of ordinary skill, which we find to be consistent with the problems addressed in the ’338 patent and the prior art.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Initially, we note that “amount of charge” reflects no express limitation on the manner of expressing the “amount” or the “charge.” And the Specification uses both “desired charge percent level” and “desired charge range level” as alternative ways for a user may specify an “amount of 3 As recited in independent claims 10, 19, and 28 charge.” For example, the Specification describes that a user may specify an amount of charge by specifying a desired travel distance as follows: “the user may indicate a desired charging level (and/or a desired charging level may be automatically calculated) based on a desired distance of travel.” Ex. 1001, 19:49–57 (emphasis added). Therefore, “amount of charge” may also refer to a desired mileage or range. Figure 7 further demonstrates that a user may select “amount of charge” in terms of a “percent” or a “range” as shown in Petitioner’s annotated version of the pertinent portion of that figure as shown below.” slip op. at 11

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

    “We disagree with Patent Owner. First, Patent Owner’s reliance on Wonderland as announcing a rule having broad effect is misplaced. Patent Owner contends that the “Federal Circuit has confirmed that where the primary reference already includes the function of the secondary reference, an allegation to incorporate that function into the primary reference is improper hindsight and no motivation to combine exists.” Id. at 29 (citing Wonderland NurseryGoods Co. v. Thorley Indus., LLC, 988 F.Supp. 2d 479, 498–99 (W.D. Pa. 2013), aff'd, 644 F. App'x 1011 (Fed. Cir. 2016); citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed.Cir.2012))). Patent Owner’s citation to Wonderland does not support the proposition for which it is cited, namely that the Federal Circuit has “confirmed” that incorporating a function from a secondary reference into a primary reference is “improper hindsight” that precludes a motivation to combine teachings from the primary and secondary references. In Wonderland, the district court denied an accused infringer’s motion for summary judgment of invalidity, in part, due to its finding that genuine issues of material fact existed for the issue of whether sufficient motivation to combine prior art existed. Wonderland, 988 F. Supp. 2d at 511. The Wonderland decision does not constitute a final ruling on that issue, and the Federal Circuit’s summary affirmance of the final ruling by the district court does not address the issue or reflect how the issue was resolved at trial. Wonderland NurseryGoods Co. v. Thorley Indus., LLC, 644 F. App’x 1011 (Fed. Cir. 2016). Second, Petitioner also correctly points out that although Ferro refers to wireless charging, it provides no implementation details. Ex. 1004 ¶ 36; Ex. 2003, 54:8–55:9. Ferro also describes manual options for initiating charging, Ex. 1003¶ 146 (citing Ex. 1004 ¶ 109), and that an ordinarily skilled artisan would have been motivated to apply Oyobe’s vehicle sensor to allow a user to initiate Ferro’s charging methods more easily without the user having to leave the vehicle, Ex. 1003 ¶¶ 151, 152. Accordingly, we find that Petitioner has established that an ordinarily skilled artisan would have been motivated to incorporate Oyobe’s use of a sensor to establish presence of a vehicle near a charging station into Ferro’s system.” slip op. at 20

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

    “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015). Patent Owner’s argument fails to account for the level of skill and creativity of an ordinarily skilled artisan, who would have possessed a bachelor’s degree in engineering and could have easily accounted for the differences in scale depicted by Letendre’s and Donnelly’s controls. Ex. 1003 ¶¶ 247–249. Accordingly, we find that Petitioner’s showing on the motivation to combine teachings of Ferro, Donnelly, and Letendre to arrive at limitation 1h is persuasive. slip op. at 30

  Patent outcomesUS 11,563,338 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,563,338
• SAP America, Inc. v. Cyandia, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01433 · APJ Jeffrey S Smith · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” PO Resp. 9. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

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

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

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

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

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

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

  Patent outcomesUS 8,751,948 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 8,751,948
• Adobe Inc. v. Jonathan E. JaffeNo claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01352 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under any asserted §103 ground because the references did not teach monitoring the physical coupling between the sensor and memory.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Institution Decision adopted and applied Petitioner’s proposed level of ordinary skill because Petitioner’s “definition generally comports with the level of skill necessary to understand and implement the teachings” slip op. at 11

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

    “The parties present various claim construction arguments, disputing the meaning of three limitations recited in claim 1: “a sensor, which is tightly coupled to said memory”; “monitoring the integrity of the tight coupling between said memory and said sensor”; and “based on.” See Pet. 9–14; PO Resp. 5–12; Pet. Reply 4–9; PO Sur-reply 4–11. For purposes of this Decision, we do not need to discuss the construction of “based on.” See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As explained below, this Decision turns on whether Glass or Rieger discloses limitation [1c] reciting “monitoring the integrity of the tight coupling between said memory and said sensor.” Ex. 1001, 20:65–66; see infra §§ II.C.2, II.E.1, II.F. That limitation recites an element which overlaps with the earlier-recited limitation “a sensor, which is tightly coupled to said memory.” To reach our decision, we need only provide a limited discussion of two of the parties’ claim construction arguments. Our analysis follows.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “said integrity is compromised, then also providing an indication of said compromised integrity.” Ex. 1001, 20:65–21:2. Although Petitioner points out that the limitation does not expressly recite “‘specifically’ monitoring the tight coupling” (Pet. Reply 8), the structure of the clause suggests that the tight coupling is specifically monitored. At a high level, the limitation is straightforward in its recitation that the integrity being monitored is “of the tight coupling” (Ex. 1001, 20:65–66 (emphasis added)), plainly suggesting that the tight coupling is specifically monitored. More granularly, breaking the relevant clause down to its grammatical parts, the clause recites a gerund (“monitoring”) acting on a direct object (“the integrity”) which is modified by a prepositional phrase (“of the tight coupling”). Notably, the object of the preposition (“of”) is “the tight coupling.” Altogether, this reads that the integrity being monitored is specifically of the tight coupling. Also, the claim recites that “if said integrity is compromised, then also providing an indication of said compromised integrity.” Therefore, from the claim language we know that the “integrity” of the tight coupling is something that may be “compromised,” which is consistent with Patent Owner’s proposed construction of determining whether the physical coupling has been “accessed or disturbed.” Petitioner’s interpretation effectively inserts additional language into the limitation such that the limitation includes monitoring the integrity of a device containing or surrounding the tight coupling, such as a camera (or camera housing), e.g., “monitoring the integrity of a camera that includes the tight coupling.” But, because the plain reading and the structure of the limitation reads that it is specifically the tight coupling’s integrity—not another physical structure, like a camera—which is being monitored, a monitored is not consistent with the language of the claim. See PO Resp. 9 (arguing that “Petitioner’s construction is improper because the claim language explicitly requires monitoring the physical coupling between the memory and the sensor as opposed to some third structure” (emphasis omitted)).” slip op. at 17

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

    “package 50 does not specifically monitor the integrity of the coupling between Glass’s sensor and the memory and, instead, argues that Glass detects tampering of all “the components and interconnections contained in that packaging,” e.g., control logic 44, cropper 46, compressor 47, MUX 45, code generator 48, and the various interconnections between those components. See Pet. Reply 16; Ex. 1005, 5:13–41. As explained above, we construe “monitoring the integrity of the tight coupling between said memory and said sensor” to mean determining whether the physical 7 Petitioner does not assert that a person of ordinary skill in the art would have been motivated to modify Glass’s device in any way; Petitioner solely argues that Glass teaches limitation [1c], based on Petitioner’s proposed claim construction. See Pet. 30–32 (“Glass discloses this limitation.”); Pet. Reply 16–17 (“Glass and Rieger disclose the ‘monitoring’ step.”). disturbed, which specifically requires monitoring the physical coupling between the sensor and the memory. See supra § II.C.2. As we agree with Patent Owner that this limitation requires monitoring the physical coupling between the sensor and the memory, monitoring Glass’s tamper resistant package 50 does not teach or disclose “monitoring the integrity of the tight coupling between said memory and said sensor.” Accordingly, we determine that Petitioner fails to show that Glass teaches or suggests [1c] monitoring the integrity of the tight coupling between said memory and said sensor when said at least one internal and unique parameter is generated, and, if said integrity is compromised, then also providing an indication of said compromised integrity, as required by claim 1. Consequently, we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Glass.8” slip op. at 30

  Patent outcomesUS 6,757,828 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,828
• Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.All claims unpatentable
  PTAB · Feb 23, 2026 · IPR2024-01312 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 1, 2, 4–6, 16, 17, and 19–21 are unpatentable as obvious over Lundahl and Larsen; Ground 2 was conceded, and the motion to exclude was denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner asserts that Petitioner has not provided a valid justification for requiring a POSITA to have both an engineering degree and a medical degree. Prelim. Resp. 22. We agree, insofar as Petitioner has not clearly set out any particular explanation or evidence in support of its dual-degree requirement. In all other respects, we note that the parties’ proposed definitions are largely similar. Because we determine that Patent Owner’s proposed definition is reasonable and consistent with the ’028 patent and the cited art, we adopt Patent Owner’s definition. In any event, our Decision does not turn on this level of skill determination. B.” slip op. at 12

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

    “device “[f]or the treatment of large-area tissues,” such as the backs of human patients, wherein several applicators 13 are “flexibly connected to each other through hinges.” Id. (quoting Ex. 1004 ¶ 72). Petitioner asserts that a POSITA would have been motivated “to incorporate Larsen’s solution of connecting light applicators by hinges, to allow for adjustability of Lundahl’s device to provide the desired irradiance and irradiance uniformity to all target areas during PDT.” Id. (citing Ex. 1015 ¶ 127). According to Petitioner, a “POSITA would have had a reasonable expectation of success in combining Lundahl with Larsen, because both references describe similar illuminators for using light to treat conditions on a patient’s skin.” Id. at 31 (citing Ex. 1015 ¶ 128). Petitioner’s proposed modification of Lundahl also involves using LEDs as a light source instead of Lundahl’s fluorescent tubes. Id. According to Petitioner, a POSITA would have been motivated to make this change because: (1) LEDs had a lower cost and a longer lifetime than fluorescent tubes; (2) fluorescent tubes were known to have inconsistent light output within the tube itself; and (3) “the use of LEDs would be more practical to reduce spacing between light sources and the edges of the panels, as opposed to the bulky metal couplings at the end of fluorescent tubes, to reduce optical dead space across the light surface.” Id. (citing Ex. 1014, 4:41–42, 6:31–42; Ex. 1015 ¶ 129). Petitioner asserts that a POSITA would have had a reasonable expectation of success with this modification because Lundahl and Larsen “describe similar illuminators and the conversion from fluorescent tubes to LEDs was a routine practice prior to 2015.” Id. at 32 (citing Ex. 1015 ¶ 131). Patent Owner does not meaningfully dispute the Petitioner’s proposed reasons to combine Lundahl and Larsen. See generally PO Resp. To the extent Patent Owner argues that a POSITA would not have been motivated to make the combination because it would negatively affecting uniform illumination (PO Resp. 24), the motivating benefit here—using adjustable LED panels instead of monolith fluorescent tubes—outweighs the alleged disadvantages for the many reasons given by Petitioner, including greater adjustability and improved LED performance. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify.”); Reply 14. We are persuaded that a POSITA would have been motivated to combine Lundahl and Larsen for the reasons advanced by Petitioner.” slip op. at 20

  • Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner

    “Patent Owner further argues that Petitioner’s reasoning (i.e., that it would have been obvious to try placing the hinges on the inner side surfaces) is unsupported and conclusory. PO Reps. 53–54. Patent Owner argues that Petitioner fails to identify a single prior art reference showing hinged structures on inner side surfaces. Id. This argument ignores that Larsen expressly identifies hinges on at least bottom side surfaces, and Petitioner merely proposes modifying their location from the bottom sides to inner sides. We find credible Dr. Grove’s testimony that relocating hinges would have been within the level of ordinary skill in the art. Ex. 1015 ¶ 155. Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9 We further point out that the ’028 patent also suggests that gaps do” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9” slip op. at 24

  Patent outcomesUS 11,697,028 unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,697,028
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentable
  PTAB · Jan 30, 2026 · IPR2024-01078 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–6, 11–15, and 38–43 were not shown unpatentable because Petitioner failed to establish obviousness over the asserted combinations, including the feasibility and motivation to use curved batteries in a ring.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 22; see also Ex. 2018 ¶ 27. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’953 patent and the references cited in the Petition.” slip op. at 9

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

    “Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. “Patent Owner agrees with Petitioner that no terms need to be construed.” PO Resp. 22. We agree with the parties that resolution of their dispute does not require us to construe 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 controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “be improper hindsight in Petitioner’s position. Petitioner and Dr. Anthony assume that a POSITA would position the battery between Schröder’s ring halves and implement Mestas’s curved battery because it “allows a larger battery to conform to a ring’s circular shape without stressing the battery or ring housing.” Pet. 60, 64–65; Ex. 1002 ¶¶ 337, 351–354. That position, however, ignores alternative designs that are at least equally supported by Schröder’s disclosure (see Ex. 1007, Fig. 3), but would not result in a ring configured as recited in the challenged claims. Petitioner attempts to downplay this concern by characterizing the modification of Schröder’s ring to include Mestas’s curved battery as an obvious “matter of choice” in design. See Reply 10–11 (citing Ex. 1079 ¶¶ 71–77). We disagree. As explained above, the record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor because they are “5 to 10 times” the size that would be required for a finger ring. PO Resp. 27 (quoting Ex. 2021, 313:12). Petitioner argues that it “does not propose bodily incorporating Mestas’s battery into Schröder’s ring,” which on the surface is correct. See Reply 10. But this does not help Petitioner meet its burden because its actual obviousness theory that “a POSITA would have found it trivial to implement Mestas’s teachings into a ring like Schröder’s ‘finger-ring’” is not persuasive. See Pet. 60 (citing Ex. 1002 ¶ 338). For the same reasons explained in Section II.D.1 above in our analysis of Ground 1, Dr. Mestas’s teaching of a curved battery (Ex. 1002 ¶ 338) in the much smaller form factor of Schröder’s ring is not credible. See Ex. 2021, 315:9–318:9 (acknowledging that it would have been beyond the level of ordinary skill to miniaturize Mestas’s battery, but that a POSITA could try to procure one); 321:5–10 (conceding that he did not try to ascertain whether such a battery was available in the relevant time frame). Instead, we credit Dr. Mercier’s testimony that Petitioner’s proposed modification would have presented intractable practical challenges. Ex. 2018 ¶¶ 228, 230–240 (describing various aspects of battery design that Dr. Anthony did not consider). As before, Dr. Mercier’s testimony is further supported by evidence showing a consistent pattern of flat battery use in prior art finger-ring devices. See, e.g., Ex. 1005 (Niwa), Figs. 22, 29; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura), Fig. 24; Ex. 2018 ¶¶ 57–67. In sum, Petitioner’s showing for limitation 1[c] is deficient in multiple respects. First, Petitioner assumes that an ordinarily-skilled artisan would have been motivated to implement Mestas’s curved battery in the much smaller interior space occupied by Schröder’s inlay 12 without sufficiently considering the feasibility of that modification or alternative designs suggested by Schröder. Second, even if we accept Petitioner’s purported rationale for the combination (which we do not because we find it that it is predicated on improper hindsight), Petitioner has not shown that an ordinarily-skilled artisan would have had a reasonable expectation of successfully implementing the proposed modification.” slip op. at 46

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “We find that the evidence presented by Patent Owner is sufficient to establish that the Oura Ring Gen. 3 Horizon and Gen. 4 products are commercial embodiments of claim 1 of the ’953 patent and that claim 1 is coextensive in that it encompasses the entire structural apparatus of these products. See PO Resp. 82–92; Ex. 2018 ¶¶ 322–346 (comparing these products to claim 1); Ex. 2029; Ex. 2030; Ex. 2118; Ex. 2119.9 Indeed, Petitioner does not challenge any aspect of Dr. Mercier’s limitation-by-limitation analysis showing that these products practice claim 1. But more than just practicing the claimed invention, Patent Owner’s evidence supports that claim 1 recites the overall structure that provides for the particular form factor of the Oura Ring Gen. 3 Horizon and Gen. 4 products, i.e., a fingerring “wedding band” design that allows for the electronic components to be entirely contained within the ring housing with a curved external surface having no protrusions or bulges. Ex. 2018 ¶¶ 359–360; see also id. ¶¶ 322–346 (pictures depicting wedding band design of the Oura Ring Gen. 3 Horizon and Gen. 4 products); Ex. 2019 ¶¶ 47–49 (“[Patent Owner’s] decision to highlight the ring form factor indicates this feature’s importance to the marketplace success of the Oura Ring.”). We disagree with Petitioner’s assertion that the Oura Ring Application and/or Oura Membership are essential, unclaimed features such that a presumption of nexus is not appropriate. The Oura Application functions in conjunction with the Oura Ring to form a “complete solution” 9 Patent Owner and Dr. Mercier only compare these products to claim 1. Patent Owner has not demonstrated a nexus to independent claim 38. ¶¶ 20–21. The Oura Application cannot receive or display any information absent the Oura Ring’s ability to collect the information from the user. Id. Even though the Oura Application may provide additional unclaimed functionality, such as displaying activity, sleep, and readiness scores based on the data collected by the Oura ring that allow “a user to take advantage of the ring’s offerings,” this functionality is secondary to the ring’s ability to collect that data, without which, the Oura Application would serve no purpose. See Ex. 2019 ¶ 21; Ex. 2024, 93:22–95:22. As the Federal Circuit has explained, “there is rarely a perfect correspondence between the claimed invention and the product.” Fox Factory, 944 F.3d at 1374. Here, we find that on the spectrum of “unclaimed features,” the Oura Ring Application is closer to the “insignificant features” end because, while it allows the user to access and interpret data tracked by their Oura Ring, it does not materially impact the functionality of the Oura Ring or its structure.10 See Teva 8 F.4th at 1361 (explaining that “like the coextensiveness requirement itself, the concept of unclaimed features is best viewed as part of a spectrum”).” slip op. at 27

  Patent outcomesUS 10,281,953 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,281,953
• 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentable
  PTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision

  Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11

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

    “1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

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

    “substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36

  Patent outcomesUS 11,806,209 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,806,209
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00518 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach limitations 1(c) and 1(g) under the proper construction of “style.”

  RulingsRemand decision

  • RemandOther

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

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

    “Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9

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

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00572 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 because the prior-art combinations teach the limitations at issue under the Federal Circuit’s construction of “style.”

  RulingsRemand decision

  • RemandDecided for petitioner

    “We agree with Petitioner. Lemay Web discloses that the style settings of width, height, pause, and repeat for the pocket watch images can be changed by changing the values for width, height, pause, and repeat in the HTML file. Ex. 1004, 89–90. This results in changing the size, duration, and frequency of the display of the multiple pocket watch image objects without changing the image files or the Java applet. Id. That is, the 12 image objects of Lemay Web can be uniformly formatted by applying and altering the style settings of the HTML file, which is stored separately from the image objects and the Java applet. Id. at 88– 89. In our Final Written Decision, we wrote that “Lemay Web discloses that the image files that are displayed as the animation object are separate from the HTML.” Ex. 1004, 88–89.” Dec. 22. The Federal Circuit wrote that “how the Board evaluated what constitutes separateness in the prior art software is less than clear.” Opinion, 13 n.7. To be clear, the animation of Lemay Web comprises 12 different pocket watch image objects. Ex. 1004, 89. The HTML file that contains the style settings for the 12 different pocket watch image objects is stored separately from the 12 different pocket watch image objects. Id. at 88–91. The style of the 12 different pocket watch image objects can be altered by changing the values of the style settings in the separate HTML file, thus allowing the style to be uniformly applied to each of the associated 12 pocket watch image objects when the pocket watch image objects are created on the web page. Id.; see Ex. 1030 ¶¶ 28–29; Dec. 21–22. In conclusion for issue (B), we find that Lemay Web teaches applying the style located in the separate HTML file to the pocket watch image objects when creating the pocket watch image objects on the web page. Therefore, Lemay Web’s style is “defined separately from any single object” as claimed. Because Lemay Web’s style can be applied to one object and more than one object and Lemay Web’s style is defined separately from any single object, we find that the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style.”” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “What you see in the bottom right is an excerpt from the Lemay Web book . . . [y]ou can still use the Java applet just by putting this applet code into your HTML file. So this shows the animator class is going to be run within height or how big a window within the browser should be allocated in this applet. You can . . . tell the animator class how long to pause in between each image. So that’s a style that’s being applied to all of the multiple images that make up this animation. Ex. 2029, 746:23–747:7. Patent Owner then asked GoDaddy’s expert “for each unique animation you want to create with this animator class that’s shown here, you’re going to have to have a unique set of HTML code with the settings along with any of the images you’ll want to associate with the animator class, right?” Ex. 2030, 793:7–11. GoDaddy’s expert testified, with reference to Exhibit 2027, 80, that “Yeah. I’m not a hundred percent sure I understand your question, but yes, if you had six animations on a page, for example, you’d have six blocks of markup that looked like the markup at the bottom right of that slide, starting with applet.” Id. at 793:12–16. In addressing Patent Owner’s question about “each unique animation,” GoDaddy’s expert provided a hypothetical example of a web page having six animations, and explained that the six animations have six blocks of markup. Ex. 2030, 793:13–16. We find that this testimony means that if a web page has six unique animations, then for each unique animation, a corresponding HTML file contains the style settings for the image objects of that animation, such that the “six animations on a page . . . have six blocks of markup.” Id. We find that the subsequent testimony of GoDaddy’s expert cited by Patent Owner is consistent with the expert’s initial testimony that Lemay Web’s style is “applied to all of the multiple images that make up this animation.” Ex. 2029, 747:5–7. We also find that the subsequent testimony is consistent with and supported by the disclosure of Lemay Web, which teaches that an animation has a set of image files and is added to a Web page using the Animator applet. Ex. 1004, 88 (“[Y]ou’ll learn just enough about Java applets to set up animation on your Web page. . . . To create animation using Java and the Animator applet, you’ll need . . . [a] set of image files . . . that make up your animation.”); see id. at 88–91. That is, Lemay Web, consistent with the testimony of GoDaddy’s expert, discloses that the style settings for the animation of the pocket watch in the HTML file are uniformly applied to the 12 pocket watch image objects. Id. at 88–91.” slip op. at 17

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168
• Facebook, Inc. / SAP America, Inc. et al. v. Express Mobile, Inc.All claims unpatentable
  PTAB · Jan 16, 2026 · IPR2022-00597 · APJ Jeffrey S Smith · IPR · Remand

  Claims 1–4 and 6 are unpatentable under §103 over both listed prior art combinations; Lemay Web teaches the claimed style under the Federal Circuit’s construction.

  RulingsRemand decision

  • RemandOther

    “As directed by the Federal Circuit, we determine whether the prior art combination teaches limitations 1(c) and 1(g) under the proper construction of “style,” but otherwise do not revisit our analysis of claim 1. Remand Opinion 7, 13–14. The Federal Circuit construed “style” to mean “a collection of one or more settings that is defined separately from any single object but can be associated with one or more objects,” with the understanding that “associated with one or more” means capable of being associated with both one object and more than one object. Id. at 14.” slip op. at 4

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

    “We agree with Petitioner. As discussed above, the plain meaning of an “image object” read in light of the Specification encompasses data that defines an image, such as each of the 12 different pocket watch images of Lemay Web. Ex. 1004, 89–90. Therefore, the HTML file of Lemay Web, which specifies attributes including width, height, pause value, and repeat value of the pocket watch image objects, is “capable of being applied to more than one” image object, such as each of the 12 different pocket watch image objects described by Lemay Web. Id.” slip op. at 11

  • Strike new argumentNew argument consideredDecided for petitioner

    “We agree with Petitioner. The Board and Petitioner understood the meaning of “or” in the phrase “one or more objects” in Patent Owner’s proposed construction of style as meaning that “a style . . . can be associated with just one object.” Dec. 22; see Reply 4–5. The Federal Circuit “ultimately conclude[d] that Express Mobile’s proposed construction, with ‘or’ properly interpreted,” means “that the claimed ‘style’ must be capable of being applied to both one and more than one ‘object,’” and “remand[ed] for further proceedings in view of the correct claim construction.” Remand Opinion 13. In doing so, the Federal Circuit stated that “[i]t may be that under the correct claim construction, the Board finds that Lemay Web teaches the claimed ‘style’; however, that is still an open fact question for the Board to decide in the first instance.” Id. at n.6. Given that the Federal Circuit has ordered the Board to determine whether the prior art teaches the claimed “style” under the proper construction, we find that Petitioner’s arguments on this issue are timely.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Contrary to Patent Owner’s contention, the Specification discloses, “Data that defines text button, image, paragraph, or other parent objects . . . can be stored in two-dimensional arrays (by web page and by object number).” Ex. 1001, 22:11–13 (emphasis added). The Specification further discloses that “objects . . . include colors, fonts, images, audio clips, video clips, text areas, URLs and thread objects.” Id. at 2:16–17 (emphasis added); see id. at 8:40. We highlight that the Specification’s use of “object” is consistent with a definition of “object” in the computing art at the time of the invention, which is “(2) A passive entity that contains or receives data; for example, bytes, blocks, clocks fields, files . . . .” George McDaniel, IBM Dictionary of Computing, McGraw-Hill, Inc. 1994, p. 471 (Ex. 3001). Because the Specification discloses that data defines an object, we construe the plain meaning of the claimed “object,” read in light of the Specification of the ’168 patent, as encompassing data that defines the object. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (The “specification . . . is the single best guide to the meaning of a disputed term.”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996); (Excluding an embodiment in the specification from “the scope of the patent claim . . . is rarely, if ever, correct.”). Further, because the Specification discloses that data defines image objects, and that objects include images, we construe the plain meaning of the claimed “image object,” read in light of the Specification, as encompassing data that defines an image, such as one of the 12 different pocket watch images of Lemay Web.” slip op. at 8

  Patent outcomesUS 7,594,168 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 7,594,168

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.