- PTAB · Dec 19, 2025 · IPR2025-01078 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–22, and 24–30, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1011, 5:18–21. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’371 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “a person having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronic gaming technology.” Pet. 10 (citing Ex. 1003 ¶¶ 22–26). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not dispute this level of skill. See Prelim. Resp. 13–14 (“Evolution does not set forth an alternative level of skill for a person of ordinary skill in the art”). For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’371 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “a first selected position . . . to have an increased payout . . . greater than a first non-selected payout.” See Pet. 25–27, 30, 35, 36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a payout that does not receive the Prog bonus. Pet. 35–36 (“had the first selected position not been randomly selected, the player would only be eligible for the basic payout”). Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,756,371 - PTAB · Dec 17, 2025 · IPR2025-01072 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–3, 5–11, 13–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that Kido anticipates claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” Sur-reply 2. We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1001, 5:16–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’014 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 32–36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Id. at 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,011,014 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01077 · APJ Michael A Valek · IPR · Final written decision
Claims 1, 11, and 13–20 were not shown unpatentable over either Yuen and Mestas or Schröder and Mestas, principally because the curved-battery and waterproof-cavity showings were deficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner that the term “ring” is not limited to a finger- worn ring. All of the challenged independent recite a “wearable ring computing device” (claims 1 and 11) or “ring computing device” (claim 14). Nothing in the claim language itself refers to where that device is worn. Moreover, the fact that Patent Owner has in several related patents added claim language to expressly recite a ring that is “finger-worn” or “worn around the finger” evidences that the plain meaning of the term “ring” by itself does not require such. Ex. 1362, 44:45–46:61 (claims 1–18); Ex. 1363, 44:64–46:56 (claims 1–17); Ex. 1364, 48:22–23 (claim 1); see Nystrom v. TREX Co., Inc., 424 F.3d 1135, 1143 (Fed. Cir. 2005) (explaining that the fact that another claim recites a “wood decking board” suggests the term “board” is not itself limited to one made from wood or cut from a log because “[w]hen different words or phrases are used in separate claims, a difference in meaning is presumed”). This understanding is further supported by the Specification of the ’859 patent. It is true, as Patent Owner asserts, that the Specification describes a preferred embodiment that is a finger-worn ring. See, e.g., Ex. 1001, Figs. 22A–B, 23A (depicting a finger-worn ring). But precedent cautions against importing limitations from the preferred embodiment into claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2004) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Indeed, the Specification here anticipates such arguments and makes clear that the applicants’ wearable computing device (WCD) is not limited to a ring worn on the finger: The WCD can be in the form of a ring that can be worn on the finger of a human (or animal) user. Although the WCD of the present disclosure is depicted as a ring that can be worn on the finger of a user, other shapes, designs, and form factors can be utilized for the WCD. For example, the WCD can be in the form of a wrist band, bracelet, necklace, earring, or any other type of wearable accessory. In this regard, references to the finger of a user in the present application can be considered to apply to other portions of a human body depending on the form of the WCD, such as wrist, neck, ear, etc. Ex. 1001, 8:51–61.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“ordinarily-skilled artisan to modify Yuen’s device to form the waterproof cavity recited in claim 1, much less explain the particular modifications Petitioner contends that artisan would have made to Yuen’s device housing to achieve such. This is particularly problematic given that the figures Petitioner relies upon in Yuen and Mestas uniformly depict larger, wrist/arm-band type devices. See Ex. 1006, Figs. 2–13, 12:52–55 (depicting a “wrist-worn or arm-mounted accessory such as a watch or bracelet”); Ex. 1010, Figs. 1–6, ¶ 151 (same). Thus, Petitioner’s obviousness theory requires multiple modifications to Yuen’s depicted structure: (1) modifying the identified portions of Yuen’s device housing so that they form a waterproof cavity therebetween; and (2) shrinking that device and its components down to a ring designed to fit around a single toe. We credit Dr. Mercier’s testimony that such modifications would require a “complex” re-engineering of Yuen’s existing structure that Petitioner and Dr. Anthony do not sufficiently explain. See Ex. 2018 ¶¶ 108–109, 129–130, 137–138. The testimony in Dr. Anthony’s supplemental declaration does not provide the missing explanation. Dr. Anthony continues to assert that Yuen’s sensor protrusion is sealed in the space between the alleged bounding members, relying on the same annotated versions of Figures 4 and 5, without addressing the fact that according to Petitioner’s own annotations those bounding members only form a shell that is open to the attachment band at either end. See Ex. 1079 ¶¶ 26–28. Indeed, Dr. Anthony appears to acknowledge that Yuen only teaches attaching the sensor module portion of the alleged cavity with watertight glue, but asserts that “it would not make sense to have a device that is waterproof in some areas and not others.” Id. ¶ 29. That assertion, however, is not supported by anything beyond Dr. Anthony’s say-so and ignores that Yuen’s teachings regarding a watertight seal/glue refer only to the sensor package portion of the alleged cavity. See Ex. 1006, 14:66–15:4, 15:10–14. Dr. Anthony’s assertion that Mestas teaches additional “waterproofing techniques” that could be applied to Yuen’s housing is similarly cursory. See Ex. 1079 ¶ 30. He does not identify what those techniques are or how a POSITA would use them to modify Yuen. Id. Accordingly, we do not credit this testimony.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
“the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (emphasis added)). “That is, presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Id. (internal quotation marks omitted). If, on the other hand, “the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process, the patentee is not entitled to a presumption of nexus.” Id. (internal quotation marks omitted).” slip op. at 33
Patent outcomesUS 10,139,859 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless. . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,629,024 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Expert testimonyOther
“unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,265,353 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.All claims unpatentablePTAB · Dec 2, 2025 · IPR2024-00928 · APJ Neil T Powell · IPR · Final written decision
Claims 1–5, 11–13, and 16–18 are unpatentable as obvious over Schröder and Yuen, LeBoeuf, or LeBoeuf and Wissmar; Schröder alone did not render its challenged claims unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 14. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’034 patent and the references cited in the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner has the better position, as we agree with Petitioner that the ’034 patent discloses an embodiment that uses transparent potting as a window, rather than to form the overall form factor and encapsulate components: [Figure] 16C is a perspective view of the WCD with potting material 1630. As described above, the PCB, battery, and components can be disposed within the space. Once disposed therein, a potting 1630 can be provided atop the components and within the cutaway portion 1616. The potting 1630 can be transparent to allow for transmission of light through the cutaway portions 1616. Ex. 1001, 20:51–57. This configuration is shown below in Figure 16C. “[Figure] 16C is a perspective view of the WCD with potting material.” Ex. 1001, 6:1–2. As Figure 16C shows, potting material 1616 forms a window in only a portion of the WCD’s exterior. can be used to encapsulate components and form the overall form factor in some embodiments. E.g., Ex. 1001, 17:4–8, 18:61–62. But Patent Owner does not persuade us that claim 12 is limited to those embodiments. PO Resp. 29; SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). Accordingly, we do not construe claim 12’s “external transparent potting” as requiring material that “forms the ‘overall form factor of the WCD 120, in addition to providing a housing for one or more electronic components,’” as suggested by Patent Owner. PO Resp. 29. Nor do we construe the claim language as requiring material that “also fills the space and encapsulates the components,” as suggested by Patent Owner. Id.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position. Although Schröder describes some aspects that are similar to those of a printed circuit board, Petitioner has not sufficiently demonstrated that a person having ordinary skill in the art would understand Schröder’s inlay 12 or carrier foil to be a “printed circuit board,” as recited in independent claims 1, 11, and 16. As an initial matter, while Schröder refers to a “circuit board” in another context, it never refers to the carrier foil or inlay in its finger-ring embodiment as such. See Ex. 1007, 22:48–49; see also Ex. 1079 ¶ 21 (Dr. Anthony acknowledging that Schröder’s only reference to a “circuit board” is “unrelated to Schröder’s finger-ring teachings”). Instead, Schröder describes features of that inlay, explaining that “[t]he carrier foil itself consists of a flexible plastic material, e.g.[,] PET or Kapton” and “antenna coil 8 can for example be printed on the carrier foil by means of a conductive paste” and “a depression is manufactured in the carrier foil, e.g.[,] by milling, lasering, etching, before the chip module 10, the antenna coil 8 and optional further electronic devices are inserted into the depression.” Ex. 1007, 13:26–31, 13:35–37. Schröder further describes that “[a]t least one further foil can be applied to the carrier foil or the ring blank on at least one side” to produce a “multilayer foil composite” that can be “interconnected” by means of “glue” slip op. at 23
- Expert testimonyPetitioner expert discountedOther
“show that Schröder’s inlay 12 is a PCB. Relying on testimony from Dr. Anthony, Petitioner asserts that Schröder’s inlay 12 serves as a flexible carrier made of materials “commonly understood to be printed circuit board materials” such as PET and Kapton. Pet. 23 (citing Ex. 1002 ¶ 172; Ex. 1006, 12:28–29). Dr. Anthony did not provide a clear explanation of a person of ordinary skill in the art’s understanding of a PCB in his direct testimony. article describing a PCB as a “laminated sandwich structure of conductive and insulating layers” was an accurate description of a PCB: Q. So is the first sentence of this Wiki page, in your mind, an accurate description of a printed circuit board? A. So, the first sentence, “A printed circuit board (PCB)[] also called [a] printed wiring board, []is a laminated sandwich structure of conductive and insulating layers, each with a pattern of traces, planes, and other features (similar to wires on a flat surface) etched from one or more sheets of copper laminated onto or between sheet layers of nonconductive substrate.” And so your question again was? Q. Is that a fair definition of printed circuit board in your mind? A. It’s a fair description of the general process for circuit boards, layers of conductive traces.” slip op. at 21
Patent outcomesUS 9,582,034 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,582,034 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.Some claims unpatentablePTAB · Nov 25, 2025 · PGR2024-00030 · APJ Linda E Horner · PGR · Final written decision
Claims 17 and 18 are unpatentable under §112(d) for improper dependent form; claims 1–10 and 12–16 were not shown unpatentable on the asserted obviousness grounds.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We do not credit Dr. Anthony’s testimony, which is based on the arbitrary shading in Figure 7 (see Ex. 1002 ¶ 174), that Schröder teaches or suggests limitation 1[d] because it (1) is inconsistent with Petitioner’s reasoning for limitation 1[c], and (2) it is based on an admitted misreading of the embodiment of Schröder’s Figure 5 (see Ex. 1002 ¶ 175). As to the first item, Dr. Anthony states that “a POSITA would have been motivated to place a battery in a part of the cavity that is far from a PCB holding other electrical components because that configuration allows for better thermal management.” Ex. 1002, para. 175. The problem with this statement is that Petitioner relies on Schröder’s teaching that inlay 12, i.e., the alleged PCB, could include “other electrical components,” such as a battery to support its position that Schröder suggests placing a battery between the ring halves. See, e.g., Pet. Reply 2 (pointing to Dr. Mercier’s depo testimony that inlay 12 with “other components” is inserted between ring halves); id. at 3 (relying on Schröder’s teaching about placing components in depressions on inlay 12). So, Petitioner earlier asserts for the battery limitation 1[c] that Schröder teaches or suggests putting a battery on inlay 12 inside the ring halves, but then for limitation 1[d], Dr. Anthony testifies that a POSITA would place the battery “far” away from the inlay 12 (i.e., the alleged PCB). These positions are inconsistent.” slip op. at 25
- Skill levelSkill level board ownOther
“at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶¶ 18–22). Petitioner also contends that a person of ordinary skill would have been “familiar with, for example, sensor system design and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 26. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’178 patent and the references cited in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner indicates that in the related ITC proceeding involving the ’178 patent, the Administrative Law Judge (ALJ) adopted three constructions agreed-upon by the parties in that proceeding8 and also construed two disputed terms.9 Resp. 26–27 (citing Ex. 2016, 5, 6, 14). Patent Owner agrees with Petitioner, however, that no terms need to be construed to decide the issues raised in the Petition. Id. at 27. We reviewed the constructions adopted by the ITC. Ex. 2016, 5, 6, 14. 8 In the ITC proceeding, the ALJ adopted the parties’ agreed-upon constructions that: (1) the preamble of claim 1 [a finger-worn wearable ring device] is limiting; (2) [positioned/configured to fit] within a “cavity” is [positioned/configured to fit] within a “hollow space”; and (3) [the internal housing component] “coupled with” [the external housing component] is [the internal housing component] “connected with” [the external housing component]. Ex. 2016, 5. 9 In the ITC proceeding, the ALJ construed the claims such that: (1) the internal and external housing components of claims 1, 12, and 17 enclose space and do not necessarily exclude potting material; and (2) “circumferential,” as recited in claims 1, 17, and 18, does not require a closed shape. Ex. 2016, 14, 17. These constructions are not germane to the issues we need to decide to resolve this proceeding. Thus, we agree that no explicit claim construction is necessary for this decision. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“The record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “Mestas’s batteries, layout, and other components . . . would have to be scaled down 5 to 10 times to be appropriately sized for a finger worn ring.” Resp. 64 (internal quotation marks omitted) (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Moreover, we do not credit Dr. Anthony’s testimony that miniaturization of the battery would have been “trivial to implement.” Ex. 1002 ¶ 242. Dr. Anthony admitted on cross-examination that it would not have been within the level of skill of a person having ordinary skill in the art to design a smaller version of Mestas’s battery, and that such a person would need to procure a battery of the appropriate size and specifications for implementation in a finger-ring from a battery manufacturer. Ex. 2021, 315:9–318:9. Yet Dr. Anthony had not ascertained, for purposes of his testimony, whether there was a battery available in 2013 that was appropriate to fit within the inlay space of the modified version of Schröder’s finger-ring that he and Petitioner allege would have been obvious to one of skill in the art at that time. Id. at 321:5–10. Further, we credit Dr. Mercier’s testimony that Dr. Anthony’s testimony fails to consider the differences in power requirements between Mestas and Schröder or to account for the constraints of such a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶¶ 159–160. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’178 patent, we also have evidence that prior art “finger ring wearables up to the ’178 patent had used ‘coin’ type batteries.” Id. at 66 (citing Ex. 2018 ¶ 161). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would look to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 161. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura), Fig. 24; Ex. 2018 ¶¶ 61–70. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring-type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 71. Based on these findings, Petitioner has not met its burden to show by a preponderance of the evidence that a person having ordinary skill in the art would have been led to modify Schröder’s finger-ring to place a curved battery between the internal and external housing components in light of the teachings in Mestas. Thus, Petitioner has not met its burden to show by a preponderance of the evidence that dependent claim 3 of the ’178 patent is unpatentable over Schröder and Mestas.” slip op. at 38
Patent outcomesUS 11,868,178 mixedClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,868,178 - Vizio, Inc. / LG Electronics, Inc. et al. v. Multimedia Technologies Pte. Ltd.All claims unpatentablePTAB · Nov 19, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–12 are unpatentable as obvious over either of two combinations: Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth; or Kim, Ma, Hunt, and Hunleth.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“An expert witness must be qualified as an expert by knowledge, skill, experience, training, or education to testify in the form of an opinion. Fed. R. Evid. 702. We deem Dr. Houh to have the requisite qualifications to provide opinion testimony, including obtaining “a Ph.D. in Electrical Engineering and Computer Science from MIT, where his research focused on building high-speed networks and developing applications for remote video capture, processing, and display—technologies central to the ’384 Patent.” Pet. Reply 29 (citing Ex. 1003 ¶¶ 7, 10–13). The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). Dr. Houh’s industry experience establishes that he at least possesses ordinary skill in the art, and we do not disqualify his testimony. See Ex. 1003 ¶¶ 7, 10–13. We consider the factors raised by the parties in weighing his testimony with other evidence provided, including the facts and data on which it is based, in reaching our determinations here.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for patent owner
“A person of ordinary skill in the art (“POSITA”) in August of 2012 would have been knowledgeable and familiar with [user interfaces] in consumer products that are pertinent to the ’384 Patent. A POSITA would have had a bachelor’s degree in Electrical, Software, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television and/or digital video systems, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 15 (citing Ex. 1003 ¶ 21). Patent Owner agreed with and adopted this definition. PO Resp. 18; Ex. 2002 ¶ 40. The definition proposed by Petitioner is consistent with the problems and solutions in the ’384 patent and prior art of record and is supported by expert testimony. We adopt this definition.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38
Patent outcomesUS 9,578,384 unpatentableClaim construction§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 9,578,384 - Vizio, Inc. v. Multimedia Technologies Pte. Ltd.All claims unpatentablePTAB · Nov 19, 2025 · IPR2024-00723 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–12 are unpatentable as obvious under §103 over either Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, or Kim, Ma, Hunt, and Hunleth.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“As neither the claim language nor the specification provides the necessary support for a construction requiring exclusion of specific information from either view, we decline to adopt such a construction. Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (claim constructions that exclude a particular element must find support either in the words of the claim or through “express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.”). As reviewed above, the claim language and specification, while describing different things that would be present in elements could not be common to both views. To the extent Patent Owner’s proposed construction specifies elements to be excluded, we find no support for these exclusions, and in fact, find opposite language in the specification of the ’384 patent: while Patent Owner proposes that a detail view must not include “information that is associated with a series,” the specification describes a detail view as provided in the case where “a series with only a single episode” has been selected. Ex. 1001, 44:64–65. This is consistent with the possibility in the claims that a detail view may relate to “a single show.” Ex. 1001, 56:66, 57:36, 58:51. As discussed, the claims recite that a detail view is provided “if [a] selection . . . is for one of a movie or single show” and that the detail view “presents information about a selected item of the VOD content” and a that a digest view is provided “if the selection in the collection view is for a series” and that digest view “provides a listing of two or more episodes associated with a series.” See, e.g., Ex. 1001, 57:23–27, 57:31–37. Thus, by the language of the claims themselves, the provision of “either a detail view or a digest view” relates to the received third selection and is based on what that selection was. The “either . . . or” in the claim thus relates directly to the third selection and not to the resulting views. This is consistent with Dr. Surati’s testimony. See Ex. 2002 ¶ 67 (The claims “present[] the third selection as a binary choice: either the third selection is a series (in which case the digest view is presented), or the third selection is a movie or single show (in which case the detail view is presented).” While Patent Owner insists that the language and logic of the claim “excludes providing a view that can be both a detail view and a digest view,” (PO Resp. 21) we determine that this proposed negative limitation finds no support through the Therefore, we decline to adopt the proposed claim construction that further limits the plain language of the claims. Having rejected the proposed limitations on the plain language of the claims, we find that no further construction of the claim language is required in order to address the dispute before us. See Nidec Motor Corp., 868 F.3d at 1017.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner does not dispute Petitioner’s assertions regarding the combination of Kim, TechnoBuffalo, MissingRemote, Hunt, and Hunleth, including Petitioner’s assertion that one of ordinary skill in the art would have been motivated to make this combination and would have had a reasonable expectation of success in doing so. We determine that Petitioner has sufficiently shown one of ordinary skill in the art would have combined and used the details regarding a content provider user interface provided in TechnoBuffalo, MissingRemote, Hunt, to provide details relating to the user interfaces provided by a CP provider on an intelligent television, such as that of Kim. See Ex. 1003 ¶¶ 104–106, 109–110, 112. We additionally determine that Petitioner has shown a reasonable likelihood that it will prevail in showing that one of ordinary skill in the art would have been motivated to make this combination, and would have had a reasonable expectation of success in doing so. See id. ¶¶ 113– 119.” slip op. at 38
- Strike new argumentNew argument consideredDecided for petitioner
“Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” PTAB Consolidated Trial Practice Guide (Nov. 2019)15 (“CTPG”), 74. A petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73. “Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed” slip op. at 49
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has sufficiently shown that each of the TechnoBuffalo 1:09 view and the MissingRemote 1:54 view teaches or suggests the presentation of “information about a set of the VOD content that are associated with a series,” as recited. Petitioner sufficiently shows the TechnoBuffalo 1:09 view is a digest view as it presents the “year, rating, number of episodes . . . , [and] episode lengths” for the displayed series. See Pet. 42 (citing Ex. 1003 ¶ 165). Similarly, Petitioner sufficiently shows that MissingRemote 1:54 view presents episode titles about episodes in the displayed season. See id. at 44 (citing Ex. 1003 ¶ 171). Petitioner argues alternatively that each of these would have been presented upon selection of a series in its proposed combination. Pet. 42–43, 44. We determine, in both cases, that presenting information regarding multiple individual episodes to be a sufficient showing that each presents “information about a set of the 13 We note that, applying Patent Owner’s requested claim construction for “providing either a detail view . . . or a digest view . . .” in full would lead to the same result with respect to, for example, the TechnoBuffalo 1:09 view and the Missing Remote 1:54 view. Each of these teach “a view of information about a set of the VOD content that are associated with a series without information only about a single episode” (as they contain information regarding multiple episodes, see supra footnote 10 and PO Surreply 6) but not “a view of information about a single episode without information that is associated with a series.” Additionally, Petitioner persuasively argues that the prior art demonstrates that “a POSITA would have avoided using UI designs for a TV series to display a single movie, and vice versa. Pet. 49–50 (citing Ex. 1003 ¶¶ 183–184) digest view. Additionally, Petitioner sufficiently shows the presentation of a screen including information about a movie if a movie has been selected from a collection view, and information about a set of content associated with a series if a series was selected, as per the recitations of limitations 1.6 and 1.7 of claim 1. TechnoBuffalo and MissingRemote teach digest view screens relating to a series selection, Hunt and Hunleth teach information screens responsive to a movie or single show selection, and the combination and cited testimony support the provision of the appropriate screen in response to the user’s selection from a collection view, as detailed above with respect to Petitioner’s allegations.” slip op. at 44
Patent outcomesUS 9,578,384 unpatentableClaim construction§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 9,578,384
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.