• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Jul 31, 2025 · IPR2024-00508 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–18, 21–24, and 26–29 are unpatentable as anticipated by Rosenberg; the Board did not reach the alternative Brock grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction.” Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of ordinary skill for this Decision.” slip op. at 5

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

    “Petitioner argues that we need not construe any claim terms explicitly because “the Petition’s prior art discloses each element of the challenged claims under any plausible construction.” Pet. 8. We agree with Petitioner that, for this Decision, we do not need to construe any of the terms explicitly. 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))). To the extent that we discuss specific claim language, we do so below in the context of the prior art. See, e.g., infra Section III.C.2(e).” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 6

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

    “A claim is unpatentable for obviousness under § 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). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations 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 skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.4 See Graham, 383 U.S. at 17–18.” slip op. at 7

  Patent outcomesUS 9,116,546 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,116,546
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Jul 28, 2025 · IPR2024-00556 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Astala and Shahoian; claims 1, 6–9, 13, 14, and 18 also over Keely and Kolmykov-Zotov; claims 2–5, 10–12, and 15–17 also over those references with Shahoian.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “As we explained in the Institution Decision, we have reviewed the Board’s prior decision in IPR2016-01777 and we disagree with Valve that the previous Board panel actually construed the “determining a press” limitation. See Dec. on Inst. 9–10. The previous Board panel was merely making the point that the three conditions in the “determining a press” limitation had to be related in some way, and pointed to Figure 3 of the ’507 patent as an example of that relationship. IPR2016-01777, Paper 7 at 14–15 (Ex. 1023) (explaining that the interval in Figure 3 is “an integral part of the ‘determining a press imitation’”). The prior Board decision in IPR2016-01777 did not contain a claim construction because, in its Decision on Rehearing, the previous Board panel stated that it “did not expressly construe the ‘determining a press limitation’ or interpret[] the limitation to require the first two conditions recited in the limitation to be maintained for the duration of the first interval.” Apple Inc. v. Immersion Corp., IPR2016- 01777, Paper 9 at 3 (PTAB Apr. 27, 2017) (Decision Denying Petitioner’s Request for Rehearing). Thus, the prior Board decision outcome was not reliant on any particular claim interpretation or characterization of Figure 3; instead, it faulted the petitioner in that case for not considering the three conditions as a whole in the manner required by the claims. Id. at 3–4 (explaining that the petitioner needed to show the “‘first interval has elapsed’ condition as a part of the ‘determining a press limitation’” (emphasis added)). Notwithstanding, and for the sake of clarity, to the extent the prior Board decision in IPR2016-01777 characterized Figure 3 of the ’507 patent to require the pressure and change in pressure conditions to be met during the entire interval, we agree with Valve that such a reading of Figure 3 is incorrect. As Valve points out in its analysis, with which we agree, the flowchart in Figure 3 allows for both the pressure and change in pressure conditions to be met during some but not all of the entire time interval in certain circumstances. Pet. 12–14.3 In summary, we agree with Valve that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already requires—namely, that “determining a press” is defined as the satisfaction of the three conditions. Nothing more is required. Thus, we do not see the need to construe independent claim 1 beyond its plain language.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Ward, Valve argues the following: [a] person of ordinary skill in the art . . . on November 26, 2003 would have had a Bachelors’ degree in computer science, electrical engineering, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies. Pet. 7 (citing Ex. 1003 ¶¶ 47–51). Accordingly, we maintain our preliminary determination regarding the level of ordinary skill in the art. See Dec. on Inst. 8. That is, we adopt Valve’s proposed assessment of the level of ordinary skill in the art because (1) it is consistent with the ’507 patent and the asserted prior art; and (2) it is supported by the testimony of Mr. Ward. We apply this assessment of the level of ordinary skill in the art in our obviousness evaluations below.” slip op. at 12

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

    “Turning to rationale to combine, Valve contends that, because Shahoian recognizes that “[o]ne problem with existing touchpads is that there is no haptic feedback provided to the user” to “assist and inform the user” when interpreting gestures, a person of ordinary skill in the art would have recognized that Astala’s input touch screen 70 was ready for the improvement that Shahoian provides—namely, “haptic feedback associated with touchpad/touchscreen input gestures.” Pet. 17–18 (quoting Ex. 1006 ¶ 6) (citing Ex. 1003 ¶¶ 158–160). Valve argues that a person of ordinary skill in the art would have recognized that incorporating Shahoian’s haptic feedback into Astala’s input touch screen 70 would have introduced certain benefits taught by Shahoian, including, but not limited to, using haptic feedback to inform users of touchpad gestures by “assist[ing] users in noisy environments . . . where sound may not be easily heard by the user.” Id. at 18 (quoting Ex. 1006 ¶ 178) (citing Ex. 1006 ¶¶ 6, 187, 188, 193; Ex. 1003 ¶ 161). Valve also argues that a person of ordinary skill in the art would have been motivated to use Shahoian’s pressure-sensing components in Astala’s input touch screen 70 because, among other reasons, using actual pressure sensors in a touchpad would have provided more accurate determinations of user input. Id. at 19 (citing Ex. 1006 ¶ 41; Ex. 1003 ¶¶ 164–166). Valve asserts there was a reasonable expectation of success in making the proposed combination because it involves “us[ing] Shahoian’s haptic feedback and pressure sensors for their intended use.” Pet. 19–20 (citing Ex. 1003 ¶¶ 180, 181). In addition, Valve asserts that a person of ordinary skill in the art would have reasonably expected Shahoian’s haptic feedback and pressure sensors to succeed in Astala because “Shahoian demonstrates that algorithms for haptic feedback were known and predictable.” Id. at 20 (citing Ex. 1003 ¶ 182). In summary, upon reviewing Valve’s unrebutted arguments and evidence explaining how the combined teachings of Astala and Shahoian account for all the limitations of independent claims 1, 9, and 14, we agree with and adopt Valve’s analysis. See Pet. 17–31, 38–41. Accordingly, Valve has demonstrated by a preponderance of the evidence that the subject matter of these independent claims would have been obvious over the combined teachings of Astala and Shahoian.” slip op. at 19

  Patent outcomesUS 8,749,507 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,749,507
• Abbott Laboratories / Abbott Diabetes Care Inc. v. Altivera LLCAll claims unpatentable
  PTAB · Jul 15, 2025 · IPR2024-00425 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–3, 5, 9, and 10 are unpatentable as obvious over Beck, Heller, and Lovejoy; the Board did not reach the alternative Bandy grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute this assessment. See generally PO Resp. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’307 Patent. Accord Inst. Dec. 8–9.” slip op. at 8

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

    “both the unique sensor ID as well as the associated unique wireless device ID is contradicted, or at least unsupported, by the claim language and the Specification. We determine that this limitation does not require authentication of both the unique sensor ID and the unique wireless device ID, or otherwise require authentication using the unique wireless ID. Rather, the limitation only requires authentication of the unique sensor ID. The language and structure of the claim itself, “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” requires authentication of the unique sensor ID but not the unique wireless device ID. See Ex. 1001, 19:51–52 (emphasis added). The portion of the limitation reciting “associated with said unique wireless device ID” is linguistically an appositive modifying the “unique sensor ID.” Indeed, Patent Owner acknowledges the “plain meaning of the claim term is that the remote server authenticates the unique sensor ID and that such unique sensor ID is associated with a unique wireless device ID.” PO Resp. 18.” slip op. at 10

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Patent Owner does not contest Petitioner’s proposed constructions of any of these other claim terms or phrases. PO Resp. 24. We agree with the parties that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). And we agree with Petitioner’s uncontested identification of the recited functions and corresponding structure for these limitations for the reasons explained by Petitioner. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); id. at 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10– 11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). We adopt the uncontested constructions identified by Petitioner, as” slip op. at 15

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

    “We agree with Petitioner that the improvements offered by the incorporation of Heller’s teachings would have motivated one of ordinary skill in the art to combine the teachings of Beck and Heller in the manner proposed by Petitioner. Confirming Petitioner’s assertion that the combination yields improvements, Heller states that it improves the type of glucose monitor used in one of Beck’s embodiments. Beck states that its “medical device 130 includes a glucose meter” which “measure[s] blood glucose levels of blood applied to test strips.” Ex. 1007 ¶ 34. Specifically addressing such “conventional” test strip glucose monitoring, Heller states that its in vivo glucose sensor system addresses a need for continuous or automatic monitoring in a small, comfortable device. Ex. 1016, 2:1–7, 2:15–58, 3:19–25. As such, we agree that a person of ordinary skill in the art would have been motivated to combine the teachings of Beck and Heller to improve Beck’s medical device. See KSR, 550 U.S. at 401. We further agree with Petitioner that a POSITA would have been motivated to incorporate sensor implementation details described in Heller, e.g., an A/D converter and patient attachment systems, with Beck’s medical device. Pet. 44–45, 53, 55; Ex. 1003 ¶¶ 228, 234, 236–238, 259, 267, 278, which do no more than yield predictable results, e.g., converting signals or attaching a sensor to a patient. See KSR, 550 U.S. at 401 (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 20

  Patent outcomesUS 7,969,307 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,969,307
• Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00329 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 are unpatentable as obvious over Stone and Hoyos, with Varghese additionally applied to claims 7, 15, and 22.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. at 4–5. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’010 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18

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

    “3. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, the petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting Bigio, 381 F.3d at 1326); see id. at 1381. Hence, a field-of-endeavor analysis should consider a patent’s claims and written description. See id. at 1380–81.” slip op. at 35

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

    “4. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos (Pet. 20): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (4) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (5) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info”; (ii) “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 20; see Ex. 1003 ¶ 62; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 42

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

    “5. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 13:56. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses “system 400 configured to utilize the currency display over a network 402.” Pet. 22 (emphasis omitted) (quoting Ex. 1008 ¶ 40). According to Petitioner, “Stone further describes that its system includes software ‘such as program code and/or data . . . stored on one or more computer readable mediums.’” Id. at 23 (alteration by Petitioner) (quoting Ex. 1008 ¶ 54). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–34; Sur-reply 2–26. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with” slip op. at 62

  Patent outcomesUS 9,972,010 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,972,010
• Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00331 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–12, 14–18, and 20–23 are unpatentable as obvious over Stone, Hoyos, and Varghese; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’886 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18

  • Obviousness (§103) › Analogous artOther

    “4. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, the petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting” slip op. at 40

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

    “5. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos and Varghese (Pet. 22): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funds box 204 in Figure 2 to step 304 for “Enter Amount” in Figure 3; (4) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (5) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (6) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info” followed by “Perform fraud detection”; (ii) “Capture location” followed by “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 22; see Ex. 1003 ¶ 68; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 46

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

    “6. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 14:2. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses system 400 “configured to utilize the currency display over a network 402.” Pet. 23 (emphasis omitted) (quoting Ex. 1008 ¶ 40); see id. at 70. According to Petitioner, system 400 includes “at least a user device 404,” one or more recipient devices 406, and “at least one payment provider server 408” communicating “over the network 402.” Id. (quoting Ex. 1008 ¶ 40). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–36; Sur-reply 2–22. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with Petitioner that Stone teaches claim 1’s preamble. See Pet. 23–24; Ex. 1003 ¶¶ 85–88. (b)” slip op. at 76

  Patent outcomesUS 11,526,886 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,526,886
• Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00330 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–19 are unpatentable: claims 1, 4–10, and 13–19 over Stone, Hoyos, and Varghese; claims 2, 3, 11, and 12 over Stone, Varghese, and Borovsky.

  RulingsFinal written decision

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

    “all the evidence in the record, for the foregoing reasons, we find that a preponderance of the evidence supports Petitioner’s position that an ordinarily skilled artisan would have been motivated to combine Stone and Hoyos. Ex. 1003 ¶¶ 59–69; Ex. 1056 ¶¶ 15–16.” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends that “a Person of Ordinary Skill in the Art (‘POSITA’) at the time of the claimed invention would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶ 21). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for POSITA.” Id. at 4–5 (citing Ex. 1003 ¶ 21). Patent Owner has applied Petitioner’s definition of the level of skill of a person of ordinary skill in the art. PO Resp. 14. We apply Petitioner’s undisputed level of skill in the art with the exception of the phrase “at least” which injects potential ambiguity into the level of skill, because Petitioner’s proposed level of skill appears consistent with the problems addressed in the ’656 patent and the prior art. C. Claim Construction We apply the same claim construction standard used by Article III” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “III. CONCLUSION14 Weighing the competing evidence and testimony, we determine that Petitioner establishes by a preponderance of the evidence that the Challenged Claims of the ’656 patent are unpatentable. In summary: 35 Claim(s) Claim(s) Reference(s)/ Claim(s) U.S.C. Shown Not Shown Basis § Unpatentable Unpatentable 1, 4–10, 103(a) Stone, Hoyos, 1, 4–10, 13– 13–19 Varghese 19” slip op. at 86

  Patent outcomesUS 10,713,656 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,656
• Cisco Systems, Inc. v. Umbra Technologies Ltd.All claims unpatentable
  PTAB · Jul 11, 2025 · IPR2024-00344 · APJ St John Courtenay III · IPR · Final written decision

  The Board held claims 1–7 unpatentable under § 103 over Agarwala, finding Petitioner proved unpatentability by a preponderance of the evidence.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “2. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 23

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notTerm construed petitioner constructionPreamble not limitingDecided for petitioner

    “[t]he prosecution history is consistent with the specification’s focus on the data beacons recited in the preamble as being the disclosed invention.” PO Resp. 24. Accordingly, we find the prosecution history also favors Petitioner regarding whether “[t]he term ‘data beacons’ recited in the preamble is an intended use and not limiting.” slip op. at 19

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

    “Accordingly, based on the complete record, we agree with Petitioner” slip op. at 47

  Patent outcomesUS 11,146,632 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,146,632
• Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentable
  PTAB · Jul 1, 2025 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–6, 10–16, 20, and 21 are unpatentable as obvious over Kesanupalli, Challener, and Cheng.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner has applied Petitioner’s definition of the level of skill of a person of ordinary skill in the art. PO Resp. 13. We apply Petitioner’s undisputed level of skill in the art with the exception of the phrase “at least” which injects potential ambiguity into the level of skill, because Petitioner’s proposed level of skill appears consistent with the problems addressed in the ’512 patent and the prior art.” slip op. at 11

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

    “Upon review of the complete record before us, we determine that it is not necessary for us to expressly construe any claim term. 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)). D. Ground 1: Alleged Obviousness of Claims 1–6, 10–16, 20, and 21 over” slip op. at 13

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

    “For the following reasons, based on the evidence and arguments presented by Petitioner, we are persuaded that Petitioner establishes that an ordinarily skilled artisan would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Pet. 23–24; Ex. 1003 ¶¶ 48–51, 83. First, Patent Owner’s reliance on what Mr. Ramesh Kesanupalli, the individual, allegedly chose not to include in the disclosure of the Kesanupalli patent reference is unavailing. The question of obviousness is determined from the perspective of a hypothetical person of ordinary skill in the art not an actual person who may or may not have been a person of ordinary skill in the art. Ramesh Kesanupalli is one of five named co-inventors on Kesanupalli. Ex. 1006, code (75). 7 Patent Owner’s argument, in essence, is an improper request to limit the Kesanupalli reference to just the explicit problems addressed, solutions proposed, and goals achieved by the Kesanupalli reference. However, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). We have reviewed all of the cases cited by Patent Owner regarding the determination of obviousness. None of them is at odds with the principle stated in Heck.” slip op. at 28

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

    “Summary of Claim 1 For all the foregoing reasons, Petitioner establishes a by a preponderance of the evidence that claim 1 would have been obvious over Kesanupalli, Challener, and Cheng.” slip op. at 62

  Patent outcomesUS 10,929,512 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,929,512
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.All claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00306 · APJ Lisa A Murray · IPR · Final written decision

  The Board held all challenged claims of the ’933 and ’054 patents unpatentable as obvious over Ahya and McKillop, with ’933 claims 20, 21, 42, and 43 also relying on Aholainen.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three devices that used common wireless communications protocols such as Bluetooth and 802.11/Wi-Fi. More education, e.g., a Master’s or Ph.D., would compensate for less work experience and vice versa. 305 Pet. 13–14; accord 306 Pet. 14. Patent Owner “has adopted Microsoft’s definition for this proceeding.” 305 PO Resp. 6; accord 306 PO Resp. 6. Neither party argues that a particular level of ordinary skill in the art makes a difference in the outcome of the issues presented in these proceedings. Accordingly, we adopt Petitioner’s level of ordinary skill in the art, which we find to be consistent with the record evidence, particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 11

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

    “We conclude that for the purposes of this Decision, we need not determine whether the claim term “detecting” encompasses “soliciting” detectable responses from other devices, as Patent Owner proposes, Sur- Reply 3, or whether Petitioner is correct that “solicitation and detection are distinct acts, and thus using Bluetooth for solicitation is not using Bluetooth for detection.” Reply 5. As discussed in Section IV above, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp., 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Here, it is not necessary to construe the term “detecting” to determine that no presumption of nexus exists because, for the reasons discussed below, we find that AirDrop is not coextensive with the challenged claims under either party’s interpretation of the term.” slip op. at 38

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

    “device uses significantly less power than if a high speed seek was used.” Ex. 1005 ¶ 43. However, once a connection between two devices is established, Petitioner persuasively argues that “[a] POSITA would have been motivated to implement devices based on these teachings to switch from Bluetooth to Wi-Fi to transfer content, as taught by McKillop, because Ex. 1003 ¶ 70. Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have reasonably expected to succeed in implementing these features because they would have required only minor software code that was well within the skill of a POSITA, as evidenced by these features’ ubiquity in the prior art.” Pet. 19–20; see Ex. 1003 ¶¶ 38–45 (ubiquity in the prior art), 72 (only “minor software code” required). Petitioner also persuasively argues that one of ordinary skill “would have been further motivated to implement the Ahya+McKillop wireless devices to prompt users to accept or deny incoming file transfers, as described by numerous background references[,]” and would have had a reasonable expectation of success in doing so. Pet. 22; see Ex. 1003 ¶¶ 46– 51 (background references), 78–81 (motivation), 83 (only “minor software code” required to implement combination). We find that on the full record Petitioner has sufficiently established that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Here, the evidence demonstrates that AirDrop includes significant unclaimed features that are likely to have been major contributors to any commercial success or industry praise that Apple’s AirDrop-equipped devices have enjoyed. This is true even if the analysis is limited to the AirDrop feature itself, rather than to the entire Apple device. See Sur- Reply 10–11 (“Patent Owner is not claiming the commercial success of the iPhone to show a presumptive nexus. “). Petitioner identifies three major features of AirDrop that are not part of the claimed invention: (1) device visibility controls implemented using iCloud services-based authentication; (2) security, including encryption; and (3) tight integration within the Apple ecosystem. Reply 8; Ex. 1086 ¶ 15. We find that the evidence of these features is sufficient to rebut Patent Owner’s claim that it is entitled to a presumption of nexus.” slip op. at 39

  Patent outcomesUS 9,173,054 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,173,054
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.All claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00305 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1–9, 11, 13, 14, 20–31, 33, 35, 36, and 42–44 of the ’933 patent and claims 1, 3–10, 12, 14, 15, 21, 23, 25–32, 34, 36, 37, 43, 46, 47, 49, and 50 of …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three devices that used common wireless communications protocols such as Bluetooth and 802.11/Wi-Fi. More education, e.g., a Master’s or Ph.D., would compensate for less work experience and vice versa. 305 Pet. 13–14; accord 306 Pet. 14. Patent Owner “has adopted Microsoft’s definition for this proceeding.” 305 PO Resp. 6; accord 306 PO Resp. 6. Neither party argues that a particular level of ordinary skill in the art makes a difference in the outcome of the issues presented in these proceedings. Accordingly, we adopt Petitioner’s level of ordinary skill in the art, which we find to be consistent with the record evidence, particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Petitioner asserts that all claim terms should be interpreted according to their plain and ordinary meaning, and that no terms require a means-plusfunction analysis. 305 Pet. 14; accord 306 Pet. 14. Patent Owner represents that “[f]or the sake of this Response only, Patent Owner adopts Petitioner’s position that no constructions are required.” 305 PO Resp. 6; accord 306 PO Resp. 5. We find that it is not necessary to construe any claim term in either of the patents-at-issue in this Final Written Determination. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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)). In our analysis below, we have applied the plain and ordinary meaning of all terms in the challenged claims.” slip op. at 12

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

    “device uses significantly less power than if a high speed seek was used.” Ex. 1005 ¶ 43. However, once a connection between two devices is established, Petitioner persuasively argues that “[a] POSITA would have been motivated to implement devices based on these teachings to switch from Bluetooth to Wi-Fi to transfer content, as taught by McKillop, because Ex. 1003 ¶ 70. Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have reasonably expected to succeed in implementing these features because they would have required only minor software code that was well within the skill of a POSITA, as evidenced by these features’ ubiquity in the prior art.” Pet. 19–20; see Ex. 1003 ¶¶ 38–45 (ubiquity in the prior art), 72 (only “minor software code” required). Petitioner also persuasively argues that one of ordinary skill “would have been further motivated to implement the Ahya+McKillop wireless devices to prompt users to accept or deny incoming file transfers, as described by numerous background references[,]” and would have had a reasonable expectation of success in doing so. Pet. 22; see Ex. 1003 ¶¶ 46– 51 (background references), 78–81 (motivation), 83 (only “minor software code” required to implement combination). We find that on the full record Petitioner has sufficiently established that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “Here, the evidence demonstrates that AirDrop includes significant unclaimed features that are likely to have been major contributors to any commercial success or industry praise that Apple’s AirDrop-equipped devices have enjoyed. This is true even if the analysis is limited to the AirDrop feature itself, rather than to the entire Apple device. See Sur- Reply 10–11 (“Patent Owner is not claiming the commercial success of the iPhone to show a presumptive nexus. “). Petitioner identifies three major features of AirDrop that are not part of the claimed invention: (1) device visibility controls implemented using iCloud services-based authentication; (2) security, including encryption; and (3) tight integration within the Apple ecosystem. Reply 8; Ex. 1086 ¶ 15. We find that the evidence of these features is sufficient to rebut Patent Owner’s claim that it is entitled to a presumption of nexus.” slip op. at 39

  Patent outcomesUS 8,737,933 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,737,933

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.