- Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision
Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15
Patent outcomesUS 7,749,641 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01207 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that at least one claim is unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution on this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 8,692,882; and IPR2024-01208, challenging claims 1–23 of U.S. Patent” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons arguments do not directly address the specific combination proposed by Petitioner nor the specific motivations provided by Petitioner. For example, as explained further below in our analysis of claim 1, the gun embodiment of Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’s video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’s gun implementation in which individual segments are stored in the circular buffer. See Pet. 28 (“Yerazunis does disclose that in a gun camera embodiment, ‘the head pointer 104 and the tail pointer 102 . . . defining the area(s) of the circular buffer memory, are stored in a table to allow later retrieval of the video data pertaining to each firing of the gun.’” (quoting Ex. 1017, 17:50–56)); see also Pet. 30–32, 38–39.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“of Yerazunis in combination with Fiore. On this record, Petitioner has demonstrated the similarities in the data recording systems of Yerazunis and Fiore. Petitioner asserts a reasonably sufficient basis for establishing the “specified frame data associated with [the] firing event” to be preserved as the disclosure of a designated segment that is write-protected. Based on the current record, we find Petitioner’s evidence more persuasive than Patent Owner’s assertion that Yerazunis preserves the entire buffer—not designated segments. Again, Petitioner admits Yerazunis does not expressly refer to “indexing write-protected segments as second files” but further establishes with sufficient basis that a person of ordinary skill in the art would understand the tagging features of Yerazunis aligns with the concept of indexing. Further, Petitioner shows that eventually it will be necessitated to locate or retrieve the data, providing further motivation for indexing, which is not only disclosed in Fiore, but demonstrated as well known in the art. See Pet. 28–29. Petitioner demonstrates the combination of Fiore and thus, on the current record, we are not persuaded by Patent Owner’s argument that Yerazunis only preserves post-recording data. Patent Owner further does not provide sufficient basis of reasoning that the “memory designation scheme” of Yerazunis which uses “unused block[s] of memory” establishes there is no write-protected segment. In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate that person of ordinary skill in the art would have had a rational basis to combine the teachings of Yerazunis and Fiore and this combination teaches these limitations of element 4.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,692,882 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01205 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–18. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”:” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’034 patent and we exercise our discretion to institute inter partes review as to all the challenged claims of the ’034 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons provided by Petitioner and summarized above. Several of Patent Owner’s arguments do not directly address the specific combination proposed by Petitioner nor the specific motivation provided by Petitioner. For example, Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’ video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’ gun implementation in which individual segments are stored in the circular buffer. See Pet. 32 (citing Ex. 1017, 3:25–38, 8:26–30, 15:9–13, 17:48–59).” slip op. at 21
- Skill levelSkill level board ownOther
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003 ¶¶ 24–25). Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 24–25). Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,034 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 10, 2025 · IPR2023-01213 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 10, 12, 13, 21, and 22 are unpatentable as obvious over Crane and Spain; claim 11 is dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Pet. 15–18. Petitioner’s proposed constructions are consistent with the claim construction decision from related litigation or the parties’ prior stipulations regarding claim construction. Id.; Ex. 1023 (parties’ stipulation); Ex. 1027 (parties’ stipulation); Ex. 1028, pp. 24–32 (District Court order). Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. passim. We note that, the District Court held, in a non-final order, that claims 1 and 12 were indefinite because of the term “in proximity.” Ex. 1028, 24– 28. The District Court, however, did not issue a final ruling with respect to claims 1 and 12 because the parties narrowed the dispute concerning the ’784 Patent to only claim 11. Ex. 2018, ¶ 3. We also note that we do not need to assess whether or not the term “in proximity” renders claims 1 and 12 indefinite to assess the Petition. Rather, we agree with Petitioner that the “in proximity” language is at least broad enough to “encompass” the matter set forth in Petitioner’s claim construction. See Pet. 17, 37–41. This is sufficient definition to make it logically possible to reach the merits of Petitioner’s challenge. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (holding that indefiniteness only precludes a patentability determination 102 or 103 if the indefiniteness makes it “logically impossible” to reach such a decision).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that it would have been obvious to implement Spain’s location determination system as part of Crane’s system and that such an implementation would have a reasonable expectation of success. Pet. 26 (citing Ex. 1008 ¶¶ 111–112). Patent Owner does not dispute Petitioner’s contentions regarding this recitation. Based on the entire trial record, we agree with Petitioner’s analysis and credit Mr. William’s testimony supporting Petitioner’s position. Thus, in view of the evidence of record, we find that Crane and Spain disclose the preamble of recitation 1.1.” slip op. at 20
Patent outcomesUS 9,097,784 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,097,784 - PTAB · Jan 22, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood that claim 1 would have been obvious over Zhou and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’840 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same definition. Prelim. Resp. 9. We use this agreed-upon definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties both assert that no terms require a formal construction. Pet. 6–7; Prelim. Resp. 9–10. Reviewing the arguments set before us, we determine that no claims require construction to resolve a dispute between the parties at this time. Realtime, 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“b) Reason to Combine & Expectation of Success As explained earlier, Petitioner asserts that it would have been obvious to improve Zhou’s video stabilization techniques by using the techniques in Cai for using future frames to characterize the video as having zero motion or not. Pet. 36. Patent Owner first argues that neither reference “offers any hint or suggestion of combining such reactive systems to create a proactive stabilization solution.” Prelim. Resp. 17; see also id. at 17–19 (similar). Patent Owner has not offered a claim construction, or otherwise explained, how the claims require a “proactive stabilization solution.” Thus, this argument is unpersuasive. Patent Owner next argues that Zhou and Cai are technically incompatible. Id. at 20–23. In particular, Patent Owner argues that Zhou “uses buffering to adjust stabilization strength,” whereas Cai uses buffering “for trajectory adjustment and distinguishing jitter from zero-motion or lowspeed movements.” Id. at 21–22 (emphasis removed). On this record, however, we are not provided with sufficient technical reasoning explaining how using the buffer for one purpose precludes its use for another purpose. Patent Owner cites its declarant, Dr. Foroosh, but his testimony merely repeats Patent Owner’s arguments without any meaningful elucidation. Id. at 22 (citing Ex. 2001 ¶ 70); 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). On this record, we are shown no technical impediment with using the buffer in Zhou for distinguishing non-zero motion by looking ahead some number of frames, as proposed in the Petition.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - PTAB · Jan 22, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood that claim 1 would have been obvious over Bell and Shi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion for the Bell & Shi Ground In summary, we determine on this limited record that Petitioner has shown sufficiently that Shi discloses the low-light high-pass parameter of claim 1 and that there would have been a reason to combine Bell and Shi. We adopt Petitioner’s remaining unchallenged assertions regarding claim 1 as our own. We are not persuaded by Patent Owner’s objective indicia analysis, which is lacking a showing of nexus. In conclusion, we determine that Petitioner has demonstrated a reasonable likelihood of success in showing that the subject matter of claim 1 of the ’840 patent would have been obvious in view of Bell and Shi. No issue unique to any of the other claims in this ground is raised at this time.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Looking to the claim language itself, we note that the claim mentions “low-light high-pass parameter” once, in the context of listing it as one of three alternative things covered by the claim. Ex. 1001, 30:35–38. We find the specification of the ’840 patent discusses the low-light high-pass parameter in two paragraphs. Id. at 21:59–22:21. In these passages, the ’840 patent states that the low-light high-pass parameter may be “a parameter that controls the amount/strength of smoothing performed to generate the smoothed trajectory.” Id. at 21:59–61. The parameter may take a value corresponding to the amount of motion blur compensation to be used. Id. at 22:8–21. Thus, the specification states that the low-light high-pass parameter is used to control the amount of motion blur compensation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Patent Owner then argues that Bell and Shi are incompatible techniques and would not be combined. Prelim. Resp. 19–20. In particular, Patent Owner argues that Bell preemptively adjusts for future motion, whereas Shi reacts only after blur is detected. Id. at 20. On this record, this argument is unpersuasive because Patent Owner has not sufficiently explained the alleged technical incompatibility. Patent Owner’s position relies on the testimony of Dr. Foroosh, but we do not credit his testimony here because it merely mirrors what Patent Owner has argued, without technical explanation. Ex. 2001 ¶ 65; 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In contrast, both Bell and Shi look at future frames for motion smoothing. Ex. 1006, 10:10–16 (describing Bell’s “look-ahead buffer”); Ex. 1007, 1:61– 65 (describing Shi’s “use [of] future frames”). Thus, on this record, we are not persuaded that there is a technical incompatibility in the manner Patent Owner alleges.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther
“Prelim. Resp. 23–31. Patent Owner’s position is underpinned by its evidence purporting to show its “dominant position in the U.S. action camera market,” based on its “HyperSmooth technology” that it asserts “has garnered widespread industry recognition.” See generally id. However, even if we were to accept Patent Owner’s argument that it has a revolutionary and successful product, that does not mean that all claims of its patents would have been non-obvious. For us to give substantial weight to objective indicia of non-obviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)); see also Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”) (cleaned up). Patent Owner here has not attempted a nexus analysis in its Preliminary Response. At best, it improperly incorporates by reference a claim chart (Exhibit 2016) served in the related ITC proceeding. Prelim. Resp. 25; 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Even then, the claim chart appears to admit that claim 1 does not read on Patent Owner’s technology. Ex. 2016, 30.2 On this record, we cannot determine whether, or the extent to which, Patent Owner’s assertions of non-obviousness are due to the claimed invention because of the failure to show nexus to the subject matter of the claims.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - PTAB · Jan 15, 2025 · IPR2024-01044 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1, 4, 8–23, and 27 on all asserted grounds, finding a reasonable likelihood that Jones renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’629 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 2–4 years of experience in the field of wireless communication,” and that “[e]quivalent education, work, or experience in this field could substitute for the foregoing qualifications.” Pet. 20 (citing Ex. 1005 ¶ 82). Patent Owner adopts Petitioner’s definition. Prelim. Resp. 22. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view the” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term that we need to construe. Pet. 5–6; Prelim. Resp. 23. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“52 subcarriers are used while “the DC subcarrier and 11 subcarriers near the edges of the 20 MHZ channel are not used for data transmission” (i.e., are set to zero). Ex. 1014, 2:14–30 (explaining the long training sequence for a conventional 802.11a preamble), 6:11–15. Notably, Jones also teaches that “packet formation block 314 may insert appropriate complex values at unused . . . subcarrier locations in each group of symbols D[k],” and that “any or all of the subcarriers k may be used to transmit data, thereby increasing the data rate.” Id. at 6:15–20 (emphasis added); see also id. at 8:22–24 (teaching that an extended long training sequence “can contain more than 52 non-zero subcarriers”). At this stage, we credit Dr. Buehrer’s testimony that one of ordinary skill in the art would have been motivated to “add[] four subcarriers to 802.11a data and training fields [to] increase[] data rate throughput as taught in . . . Jones,” as this testimony is consistent with Jones’s teachings. Ex. 1005 ¶ 107. In addition, we agree with Petitioner and find that one of ordinary skill in the art extending the long training sequence would want to use the same 52 center subcarriers to maintain backwards compatibility with 802.11a. Pet. 28–29. This is supported by Jones’s teaching of having a long training sequence that “is usable in a process for determining whether the packet is an 802.11a packet or an extended-mode packet.” Ex. 1014, 8:37– 40. Moreover, Jones’s L2 example of an extended long training sequence maintains the same 52 center subcarriers as 802.11a, which also supports this finding. Id. at Fig. 4; Ex. 1005 ¶¶ 96, 113. Thus, up to 11 subcarriers unused in 802.11a could be used for an extended long training sequence. “more than 52 non-zero subcarriers” can be used for an extended long training sequence, which explicitly teaches that only a portion of the 11 subcarriers may be used. Ex. 1014, 6:15–20, 8:22–24. In light of the above teachings, we find that one of ordinary skill in the art would have found it obvious to use only the next 4 nearest to the center of these 11 unused subcarriers. Ex. 1005 ¶ 87. The remaining 7 subcarriers would remain at zero.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · Graham - PTAB · Jan 7, 2025 · IPR2024-00984 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1, 6, and 7 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Meulen and Chao obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’413 patent. We institute inter partes review as to all the challenged claims of the ’413 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“relevant field “would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras,” or alternatively “would have four years of experience working on image or video processing, or digital cameras.” Pet. 6. Petitioner further argues that an “advanced graduate degree” may “make up for the work experience.” Id. (citing Ex. 1002 ¶¶ 33–34). At this stage of the proceeding, “Patent Owner applies Petitioner’s proposed level of skill.” Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’413 patent and the cited prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no claim terms “require a formal construction” and that “Petitioner interprets the challenged claims based on the breadth of GoPro’s infringement allegations.” Pet. 6 at n2. Patent Owner asserts that several claim terms are disputed in the parallel ITC litigation, but “none of them need to be resolved by the Board.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 34). We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“persuaded, at this stage of the proceeding, by Petitioner’s arguments for the reasons summarized above. Specifically, we agree that the combination of Meulen and Chao teaches non-uniform pixel shifting. Contrary to Patent Owner’s argument, we agree with Petitioner that by teaching image scaling, Meulen teaches that pixels are shifted based on a scaling factor from the input to output positions. Further, we also agree that by disclosing stretching or shrinking of its background elements Chao also teaches pixel shifting. Petitioner argues that because Meulen mentions scaling of images without providing the details of how to perform scaling, a person of ordinary 1002 ¶ 262). Based on the teachings of these references and the similarity of the references’ technology, we determine Petitioner has established a reason to combine Meulen and Chao with a reasonable expectation of success in doing so.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,015,413 - Cambridge Mobile Telematics, Inc. v. Sfara, Inc.Institution deniedPTAB · Dec 13, 2024 · IPR2024-00966 · APJ John F Horvath · IPR · Institution
The Board denied institution because the Petition did not explain whether the component limitations invoke § 112(f) or identify corresponding structure, as required by Rule 42.104(b)(3).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“The Consolidated Trial Practice Guide[1,2](“CTPG”) . . . instructs that “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction.” CTPG 45 (emphases added) (citing 37 C.F.R. § 42.104(b)(3)). The CTPG advises that a party “may choose to elaborate why § 112(f) should or should not apply to the limitation at issue.” Id. Notably, the CTPG warns that “[a] petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Id.” slip op. at 6
- BurdenDenied
“Given these facts, we determine that rule 104(b)(3) mandates that the Petition either identify “the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” recited in the “component” term limitations or explain why the “component” term limitations are not subject to a means-plus-function construction. This, it fails to do. To be clear, we note that our rules do not prohibit a petitioner from taking inconsistent claim construction positions before the Board and a district court. See 10x Genomics, Inc. v. Bio-Rad Labs, Inc., IPR2020- 00086, Paper 8 at 18 (PTAB Apr. 27, 2020). However, where, as here, a petitioner has proposed a claim term be construed solely as a means-plus-function limitation in a district court proceeding and emphasized that the issue is not only “most significant” but potentially “case . . . dispositive,” we determine the petition is obliged to either apply that construction in this proceeding or explain why that construction is not applicable. Accordingly, we find the Petition to be deficient under rule 104(b)(3).4” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“connote a definite structure. See Williamson, 792 F.3d at 1350 (identifying words such as “mechanism,” “element,” “device,” and others as verbal constructs that do not connote sufficiently definite structures). Indeed, the Specification discloses all of the “components” recited in claims 1, 8, and 15, including the “comparing component,” can be “implemented as a computer having tangible computer-readable media for carrying or having computer-executable instructions or data structures stored thereon.” Ex. 1001, 5:35–43. Thus, like the word “module,” a recognized nonce word, each of the recited “components” is nothing more than “a generic description for software or hardware that performs a specified function” and their recitation “operate[s] as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Accordingly, we construe the “comparing component” limitation recited in claims 1, 8, and 15 as a meansplus-function limitation whose function is “generating a comparison signal.”2” slip op. at 14
- Skill levelNot reached
Claim constructionDiscretionary denialcites MarkmanPatents in suitUS 9,333,946 - PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., 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 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767
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.