- PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228 - PTAB · Sep 15, 2025 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 2, 7–9, 11, 12, and 20–24 are obvious over Yamaguchi-727.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Cerebrum Sensor Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).1 Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner complies with the requirement of identifying “[h]ow the claim language is to be construed” by setting forth proposed interpretations of various claim terms in the table above.7 Both cases cited by Patent Owner relate to an issue presented by a petitioner’s alleged inconsistent handling of whether a claim term is subject to interpretation as a means-plus-function element under 35 U.S.C. § 112(f). Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 at 11 (PTAB Feb. 14, 2019); 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023- 7 Neither party has identified any claim language that might invoke interpretation as a means-plus-function limitation, and we discern no such claim language. Additionally, we do not imply that a petitioner must always propose express interpretations for specific claim language to comply with Rule 42.104(b)(3). Rather, we only note that Petitioner has, by any measure, complied by expressly proposing interpretations for identified claim language.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,835,421 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - Cisco Systems, Inc. v. Portsmouth Network Corp.No claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the asserted obviousness combinations did not cure the failure to show the claimed request and routing steps.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art in the field of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of its Response. PO Resp. 5. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither party contends that any formal claim construction is necessary. See Pet. 12 (“Petitioner submits that, for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.”); PO Resp. 4 (“Here, at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’279 Patent’s claim terms.”). Patent Owner notes, however, that Petitioner had asserted specific constructions in the Cisco litigation for the term “predetermined,” as recited in claims 1, 10, 14–16, and 18, and for the term “quantum.” PO Resp. 4. Specifically, according to Patent Owner, Petitioner proposed that “predetermined” be construed as “determined before the data flow request” and that “quantum” be construed as “an amount of a requested resource by which to increase or decrease.” Id. (citing Ex. 2007). Patent Owner contends asserted prior art combinations disclose or render obvious the challenged claims under these constructions. Id. Because our conclusion that Petitioner has not demonstrated that any of the challenged claims are unpatentable does not turn on the construction of either “predetermined” or “quantum,” there is no need for us to construe those terms. See Realtime Data, 912 F.3d at 1375.” slip op. at 12
- Strike new argumentNew argument disregardedDecided for patent owner
“We again are not persuaded by Petitioner’s argument. As an initial matter, we find no argument with respect to “best effort data traffic” or dropped packets in the Petition. See Tr. 12:10–21 (conceding that “the phrase ‘best effort’ was not in the Petition” but arguing that it was raised in response to the Patent Owner Response). Moreover, we are unable to identify any argument in the Patent Owner Response to which this line of argument is properly responsive, and Petitioner does not identify any such line of argument. Instead, Petitioner’s argument appears to advance belatedly a new theory. See 37 C.F.R. § 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 73–74, available at” slip op. at 43
- Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed
“We credit the supporting testimony of Dr. Olivier on the points discussed above, as it is explained sufficiently and consistent with the testimony simply mirrors the Petition and does not explain sufficiently why a person of ordinary skill in the art would have understood Kovvali in the manner Petitioner asserts. See Pet. 35; Reply 17–18; Ex. 1003 ¶ 83.” slip op. at 44
Patent outcomesUS 7,035,279 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,035,279 - Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33
Patent outcomesUS 6,917,986 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,917,986 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Jul 22, 2025 · IPR2025-00255 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that claims 1, 23, and 27 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Summary For the reasons discussed above, Petitioner has made sufficient showings at this stage of the proceeding that the Wilcox-Londergan-Raskin- Wu combination teaches or suggests every limitation in claims 1, 23, and 27 of the ’139 patent, that one of ordinary skill in the art would have had reason to combine those teachings and suggestions to arrive at the inventions recited in claims 1, 23, and 27, and that one of ordinary skill in the art would have had a reasonable expectation of success. Accordingly, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges to claims 1, 23, and 27 based on the combination of Wilcox, Londergan, Raskin, and Wu. Accordingly, institution of an inter partes review is appropriate under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Dr. Terveen has provided its own definition . . . . 31. I believe Dr. Terveen’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“missing in the prior art. Prelim. Resp. 29–34. Limitations [1.4], [23.5], and [27.4] each recite: “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 29:47–49, 31:33–35, 32:29–31. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a Boolean AND operator and/or a comma).” Pet. 25–26 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’139 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31; compare Ex. 1001, 30:19–22 (claim 6, “string separator character”), with id. at 31:22–26 (claim 22, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues:” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“one of ordinary skill in the art would have considered “reverting some of the changes that had been made to Lotus Notes R5’s ‘Search Builder’ to make it more similar to Lotus Notes earlier 3.0’s ‘Query Builder.’” Prelim. Resp. 16. The issue, however, is not whether “over the years Lotus Notes moved away from a unified search field[,]” as Patent Owner suggests. Id. at 14. The issue is what “inferences and creative steps” a person of ordinary skill in the art would have employed, based on Wilcox and Londergan, when designing a new method and system for search indexing. KSR, 550 U.S. at 418. Petitioner’s argument is that one of ordinary skill in the art would have been motivated to consider Wilcox and Londergan together in order to “obtain a more complete and comprehensive understanding of the Lotus Notes system,” which in turn would have inspired certain inferences and creative steps that would have resulted in the portions of the claimed invention allegedly disclosed in Wilcox and/or Londergan. Pet. 22. We do not agree with Patent Owner that this argument can only be the result of improper hindsight bias. See Prelim. Resp. 16–17. At this stage of the proceedings and based on the current record, we determine that Petitioner has sufficiently shown that a POSITA would have been motivated to combine Wilcox and Londergan.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,633,139 - PTAB · Jul 22, 2025 · IPR2025-00254 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1–20 are unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute an inter partes review of claims 1–20 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’490 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“art. Prelim. Resp. 30–34. Limitation [1.10] reads, “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 30:8–10. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 23–24 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.16 Consequently, based on the current record, for the purposes of this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing. If Boolean modifiers are excluded from the definition of a “string separator character,” then the Londergan Search Bar and Search Builder features, which accept only Boolean operators, do not teach or suggest 16 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’490 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 32; compare Ex. 1001, 31:14–17 (claim 12, “string separator character”), with id. at 32:19–23 (claim 20, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 32 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the search incrementally to use a single-character string separator character, such as a plus sign, as was known in the art (e.g., EX1057, 60, 109, 129, 151), or a comma, as described by the Lotus Notes references (EX1059, 159-165), at least because a POSITA knew that a goal of the incremental search is to minimize the number of characters the user has to enter before obtaining the desired search results. Pet. 24 n.7. limitation [1.10].17 See Ex. 1061, 140–42. The Wilcox Search Bar similarly is limited to strings separated by a Boolean operator. See Ex. 1059, 160–62. The Wilcox Query Builder, however, does teach multiple search strings separated by a string separator character, specifically a comma. Id. at 163 (“If you want to search for documents that contain all of several words, type them in this box, separated by commas.”). Thus, while we do not accept all of Petitioner’s reasoning, there is evidence to support Petitioner’s overall argument that the proposed combination discloses multiple search strings separated by a string separator character, as we have preliminarily construed the term.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“extreme technical difficulties with even using incremental searches.” Prelim. Resp. 21, 25 (citing Ex. 1021, 126). Patent Owner argues that “[a] POSITA is not motivated to undertake a modification of the prior art with something that the art teaches would be difficult or impossible to do.” Id. at 21 (citing Natera, Inc. v. NeoGenomics Labs., Inc., 106 F.4th 1369, 1377–78 (Fed. Cir. 2024)). We do not interpret Raskin in this manner. Patent Owner points to a passage in Raskin stating, “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.” Ex. 1021, 126. There is a difference, however, between “difficult to implement” and “difficult to use.” For the end-user, Raskin concludes that “[f]rom the point of view of interface engineering, the advantages of incremental searching are so numerous and the advantages of delimited searches so few that I can see almost no occasions when a delimited search would be preferred.” Id. at 126 & n.7 (“A search is either incremental or excremental.”). It is reasonable to conclude that one of ordinary skill would have been motivated to choose a search method that offered numerous advantages to end-users. Finally, Patent Owner argues that “Raskin’s entire philosophy to user interfaces was incompatible with Lotus Notes.” Prelim. Resp. 22–25. According to Patent Owner, “Lotus Notes is all about centralized collaboration around documents, files, and file structures[,]” while Raskin “goes in a completely different direction, espousing the elimination of filenames and ‘hierarchical file structures’ including directories and folders.” Id. at 23 (citing Ex. 1021, 119). Patent Owner claims that modifying the Lotus Notes references with Raskin would “effectively render[] Lotus Notes’ functionality of hierarchical viewing of and responding to documents unusable.” Id. Petitioner, however, does not propose to incorporate Raskin’s views on hierarchical file structures into the combination of Wilcox and Londergan. It is not necessary for the entirety of Raskin’s teachings to be physically compatible with the Lotus Notes systems described in Wilcox and Londergan. Orthopedic Equip., 702 F.2d at 1013 (“Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”); In re Sneed, 710 F.2d at 1550. Raskin is cited for one purpose: its teachings regarding incremental search. On the current record, we find Petitioner has demonstrated that one of ordinary skill would have been motivated to modify the combination of Lotus Notes references according to those teachings in Raskin. slip op. at 23
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,552,490 - PTAB · Jul 22, 2025 · IPR2025-00253 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 1–10 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 10 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“in the prior art. Prelim. Resp. 30–34. Limitations [1.4] and [10.4] both recite: “wherein the first and second strings are separated by a string separator character in the first search field.” Ex. 1001, 29:44–46, 30:41–43. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 26–27 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the current record, for the purposes of 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’035 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31 (citing Ex. 1001, 8:45–59, 22:34–46). Moreover, Patent Owner persuasively argues that “a POSITA would not have understood Boolean operators like AND to be a string separator as used in the claims” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 109). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“based on the fact that all three references “generally relate to searching.” See Prelim. Resp. 20. The fact that Raskin does not explicitly discuss searching across multiple files does not mean that there would be no motivation to combine Raskin with the Lotus Notes references. Although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine or modify the known elements in the manner proposed, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We conclude on the current record that Petitioner’s rationale for combining Raskin with the Lotus Notes references is not over-broad.” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,370,035
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.