- Apple Inc. v. Paul PoniatowskiAll claims unpatentablePTAB · Oct 2, 2025 · IPR2024-00731 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 8–13, 15–20, and 22–27 are unpatentable as obvious over Wang, Dua, and Yong.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Ex. 1003 ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. 2 US Patent App. Pub. No. US 2002/0023215 A1 (Ex. 1004). 3 US Patent App. Pub. No. US 2006/0165060 A1 (Ex. 1005). 4 Korean Unexamined Patent App. Pub. No. 10-2007-0063899 (Ex. 1006). Petitioner submits Yong’s Korean-language patent application and a certified translation of the same. See id. We refer to the English-language translation of Yong. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); Ex. 1003 ¶ 36.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Patent Owner does not explicitly address the claim construction of this term. See PO Resp. Patent Owner, however, does assert that “it would be logical for those skilled in [the] art to apply any available technology to further modify and improve the shopping experience by taking a scan/pic of the products bar codes, instead of entering them manually.” Id. at 2–3. This assertion is not inconsistent with a finding that the scanned bar code information may be received indirectly. Accordingly, on this record, we construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“We agree with Petitioner that the Priority Applications do not disclose the optical input and network hub limitations or their equivalent. As Petitioner argues, “disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)) (“It is not sufficient…that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose”). Reply 4. Accordingly, for the purposes of determining eligible prior art for this Decision, we rely on the ’578 patent’s application filing date of October 19, 2009.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We determine that the preponderance of the evidence supports Petitioner arguments that the cited references are analogous art. Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Focusing on the first of the two tests above, the test for analogous art “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. We thus consider all explanations of the inventors’ subject matter while keeping in mind that prior art is analogous when it “is from the same field of endeavor, regardless of the problem addressed. . . .” In re Bigio, 381 F.3d at 1320 (emphasis added). Thus, “field of endeavor” should not be defined narrowly based only upon the specific problem addressed.” slip op. at 21
Patent outcomesUS 8,270,578 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,270,578 - Teladoc Health, Inc. v. Data Health Partners, Inc.Some claims unpatentablePTAB · Sep 12, 2025 · IPR2024-00617 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–5, 9–14, 16–18, and 20 are unpatentable as obvious; claims 6 and 7 were not shown unpatentable because the asserted grounds did not establish their missing limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific experience with computer-based systems for recording, tracking, and analyzing patient health information.” Pet. 6 (citing Ex. 1012 ¶ 36). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Bryan Bergeron. Ex. 1012 ¶ 36. Patent Owner does not oppose Petitioner’s definition of a person of ordinary skill in the art. See generally PO Resp.; Ex. 2005 ¶ 32. On the full record, we determine Petitioner’s proposed level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’142 patent and the prior art of record. C. Claim Construction” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the Specification supports construing “selection” as including inputs to a user interface, thereby “assigning” a client to a provider within the system. For example, the Specification describes a user interface including selection components. Ex. 1001, 10:45– 48 (“the user interface . . . may display . . . selection or display components”), 12:19–22 (authorized users may make selections by doubling tapping a touchscreen). The Specification further discloses that the “administrators may have complete access to the service providers and the clients to assign the clients to individual service providers through the user interface.” Id. at 11:13–18 (reference numerals removed, emphasis added). Taken together, we agree with Petitioner that assigning clients in response to selections of a user interface is consistent with the plain and ordinary meaning of the claims and the Specification. We decline to read Patent Owner’s additional limitations of “deliberate and active choice” into the claim, because these additional limitations lack support both in the claim language and the Specification. We do agree with Patent Owner’s argument that assigning and selection must be distinct elements, because they are separately listed and assigning happens in response to selection(s).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the Specification defines “projected closure date” as the date at which a goal will end. However, we agree with Petitioner that this definition is not limited to final goals, and would include the end date of any goal, including intermediate goals. Accordingly, we interpret “projected closure date” as the date at which any goal will end. We apply that definition below.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Patent Owner responds that “Petitioner does not identify any selection made by Douglas’s administrator which may result in assignment of a provider.” PO Resp. 15 (citing Pet. 19–20; Ex. 1002, 6:33–7:13, Fig. 2). First, Patent Owner construes “selection” as “a deliberate and active choice by an administrator,” and argues that “Douglas discloses no such selection.” Id. at 15–16 (citing Ex. 1001, 11:13–18; Ex. 2005 ¶ 66). Instead, “Douglas’s administrator merely inputs pre-determined information from the prescription form” that the physician provided and thereby selected. Id. at 16 (citing Ex. 1002, 6:33–7:13, Fig. 2; Ex. 2005 ¶ 67). We find this argument not commensurate with the claim scope. As discussed above in claim construction, we decline to read Patent Owner’s additional limitations of “deliberate and active choice” into the selection limitation as lacking support both in the claim language and the Specification. Supra, Section III.C.1. Second, Patent Owner argues that Douglas does not teach assigning “in response to” an administrator’s selection. PO Resp. 16–17. Instead, Patent Owner argues that Douglas’s “information entered by the case advisor was provided by the physician.” Id. (citing Ex. 1002, 6:33–7:16). Again, we find this argument not commensurate with the claim scope, as the claim does not require a single assignment of client to provider. In other words, even if Douglas’s prescription information qualifies as a first assignment of client to provider, Douglas teaches the administrator using the same information to assign the client to a provider within the system, thereby meeting the required claim limitation.” slip op. at 16
Patent outcomesUS 11,151,142 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,151,142 - Teladoc Health, Inc. v. Data Health Partners, Inc.Some claims unpatentablePTAB · Sep 12, 2025 · IPR2024-00616 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–9, 11–17, 19, and 20 are unpatentable as obvious; claim 10 was not shown unpatentable because the petition lacked evidence supporting the proposed missing-data alert modification.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had at least a bachelor’s degree in a healthcare field as well as 1–2 years of experience with health information technology, including specific” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We agree with Patent Owner that the separately listed “goals, a plan of action, and thresholds,” should be considered distinct elements that cannot exist as the “same element” and therefore must be separately taught by the art. However, we agree with Petitioner that the claims and Specification describe the elements as interrelated whereby one may interact the other, even if they are separate elements. See Google, 92 F.4th at 1059 (“The proper construction of the term must allow for any of the five claimed inputs to potentially be used to calculate another claimed input.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“modify Douglas with Wager to “ensure that the assigned physician had the capacity to effectively treat the patient,” given the number and variety of patients in Douglas’s system. Pet. 54–55 (citing Ex. 1002, 6:6–14, 6:36–7:4, Figs. 51, 57; Ex. 1012 ¶ 129). Petitioner asserts that Wager addresses this problem by presenting the staff manager “with a suite of provider assignment options and alternatives, to automatically organize and drive assignment ratios and other assignment parameters and options with compliance, capacity, best practice and other criteria taken into account.” Id. at 54 (citing Ex. 1003 ¶¶ 6–7; Ex. 1012 ¶ 128). Petitioner further argues that the combination “would have also helped ensure that the assigned physician had the capacity to effectively treat the patient” because Wager’s interface effectively manages capacity issues against fluctuating clinical demands, thereby increasing quality of care for the patient. Id. at 55 (citing Ex. 1003 ¶¶ 6, 8, 20; Ex. 1012 ¶ 129). Patent Owner makes six different arguments that one of ordinary skill would not have been motivated to combine Douglas with Wager. PO Resp. 36–46. As discussed below, Patent Owner’s arguments do not persuasively rebut Petitioner’s articulated reasons to combine the references, because Patent Owner’s arguments are inconsistent with KSR’s “expansive and flexible approach” to obviousness. See 550 U.S. at 415.” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Finally, Patent Owner argues that “Douglas teaches against accomplishing its goals in an in-person setting like the one to which Wager is directed.” PO Resp. 43–45 (citing Ex. 1003 ¶¶ 4, 5, 11, 13; Ex. 2005 ¶ 108; Ex. 2006, 66:6–19). Patent Owner argues that Douglas’s system remotely monitors patients to avoid the costs and inconvenience of in-person programs. Id. (citing Ex. 1002, 1:29–35, 2:5–7; Ex. 2005 ¶ 109; Ex. 2006, 67:16–68:2). Patent Owner adds that Douglas’s teaching of office visits does not contradict the “remote only” argument, but instead, reinforces the patient’s desire to remain with their original physician, “instead of utilizing the proposed Douglas-Wager system to reassign the patient to a new physician.” Id. at 45. We are not persuaded by Patent Owner’s argument that Douglas teaches away from the combination with Wager. Douglas’s preference for remote medicine does not criticize or discourage office visits or the combination with Wager’s in-person setting. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from . . . alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”). Accordingly, there is no teaching away from the combination with Wager’s computerized system for assigning patients to physicians.” slip op. at 47
Patent outcomesUS 11,144,554 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,144,554 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00002 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after disclaimer and terminated the proceedings.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,880,319 - Samsung Electronics Co., Ltd. v. Netlist, Inc.Adverse judgmentPTAB · Sep 8, 2025 · IPR2025-00001 · APJ Norman H Beamer · IPR · Adverse judgment
Adverse judgment was entered against Patent Owner on claims 1–20 after statutory disclaimer; the proceedings were terminated.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–20 of the ’024 patent and claims 1–20 of the ’319 patent, and explicitly requests that the Board enter adverse judgment against it with respect to those claims, the only claims at issue in these trials. Paper 26, 1.” slip op. at 2
NonePatents in suitUS 11,386,024 - Juniper Networks, Inc. v. Monarch Networking Solutions LLCAll claims unpatentablePTAB · Aug 6, 2025 · IPR2024-00561 · APJ Thu A Dang · IPR · Final written decision
Claims 1 and 6 are unpatentable under § 103(a) over Wainner and Bocci; the Board did not reach the Kamite and Bocci ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art (POSITA) at the time of the invention of the ’775 patent would have had “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking or a related field,” wherein “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 19 (citing Ex. 1040 ¶¶ 48–50). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See PO Resp. 18. We apply Petitioner’s definition of a POSITA at the time of the claimed invention because, based on the record, this proposal is consistent with the ’775 patent, the asserted prior art, and is supported by the testimony of Dr. Bhattacharjee.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Patent Owner’s argument that a link is a physical connection (PO Resp. 19; PO Sur-reply 2) unavailing. In particular, claims 1 and 6 do not recite any requirement that a “link” is “physical.” Further, as Petitioner points out, there is no support in the ’775 patent for “defining ‘link’ as only a physical connection,” and Patent Owner does not point to any disclosure in the ’775 patent for such support. Pet. Reply 5. Although we agree with Patent Owner that a link can connect the interfaces of routers wherein routers are “physical devices” (PO Sur-reply 2), claims 1 and 6 do not require that the link physically connects the routers. That is, the claims merely require a pseudo-wire to comprise a link set up between routers to connect the routers. We agree with Petitioner that pseudo-wires comprising the connection links “can connect to any interface, ‘whether it is a physical, logical, or virtual interface.’” Pet. Reply 5 (citing Ex. 1043, 10; Ex. 1010, 3; Ex. 1042 ¶ 7). In fact, during oral argument, Patent Owner acknowledges that “[a] link, . . . , is not limited to a physical connection.” See Tr. 30:6–7.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We find unavailing Patent Owner’s arguments that a pseudo-wire (“a type of emulated connection”) cannot be the same as a link (“a type of physical connection between router interface”). PO Resp. 20. In particular, claim 1 does not recite any requirement that a link be a physical connection, and thus, does not require that a link differs from the emulated connection of a pseudo-wire. As discussed above, during oral argument, Patent Owner acknowledges that a link is not limited to a physical connection. See Tr. 30:6–7. The ’775 patent itself provides no definition for “pseudo-wire” to support Patent’s Owner’s construction, and Patent Owner does not point to any disclosure in the ’775 patent for such support. As Petitioner points out, the ’775 patent instead supports a construction of “pseudo-wire” as comprising multiple links, wherein “[t]he first and second links constitute a first pseudo-wire pw1” and the second “pseudo-wire ps2 consists of the first link L1 and a second link L3.” Pet. Reply 7 (emphasis omitted) (citing Ex. 1001, 6:29–43). We find availing Petitioner’s argument that, even if links were “physical connections” as Patent Owner asserts, “then the pseudo-wire consists of . . . two physical connections,” no different from a link, contrary to Patent Owner’s assertion. Id. (citing Ex. 1042 ¶ 10). Although Patent Owner argues that the POSITA has always considered a pseudo-wire as a point-to-point link set up between input and output routers (PO Resp. 5–6), claims 1 and 6 do not recite that a pseudo-wire comprises a point-to-point link set up, and there is no support in the ’775 patent for specifically defining “pseudo-wire” as and limiting the term to a point-to-point link set up.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Bhattacharjee testified in support of Petitioner’s position that “[a] POSITA would have understood that the ordinary meaning of ‘link,’ . . . includes both physical and virtual connections, particularly in the context of pseudo-wires.” Ex. 1042 ¶ 7. We find availing Dr. Bhattacharjee’s testimony, which is supported by evidence. See id. (citing Ex. 1043, 10; Ex. 1010, 3 (disclosing that pseudo-wires encapsulate “data arriving at the PE-bound port (logical or physical)”), 4 (disclosing that the attachment circuit over which the pseudo-wire is established can be a “physical or virtual circuit”)). For the reasons discussed above, we conclude that a “link” is not required to be a physical connection. Instead, we determine that a “link” connects the interfaces of first and second routers, whether they are physical, logical, or virtual interfaces.” slip op. at 11
Patent outcomesUS 8,130,775 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,130,775 - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-01398 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 13–25. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Giobbi ’157, Giobbi ’139, and Dua as proffered in the Petition.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00573 · APJ Thu A Dang · IPR · Final written decision
Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable as obvious over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“vi. Combining Giobbi ’157, Giobbi ’139, and Dua Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Jul 17, 2025 · IPR2024-00407 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other three grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function[] and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral arguments, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22– 18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 9, 22), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 9–19 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 19–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, RDC . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 38
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Jul 17, 2025 · IPR2024-00405 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3 (emphasis omitted)), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral argument, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22–18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 8, 21), and provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 8–20 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 20–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 26–27, 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the proposed combination of Giobbi ’157, Giobbi ’139, and Dua.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1. iv. Remaining limitations of claim 1 Petitioner provides detailed explanations as to how the combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining claim limitations as recited in independent claim 1, citing Dr. Traynor’s testimony for support. Pet. 26–27, 29–33 (citing Ex. 1005 ¶¶ 12, 26–44, 50, Fig. 3; Ex. 1006 ¶¶ 22– 44, 88–89; Ex. 1007, 6:46–65, 12:36–45, 12:51–64, 13:9–18, 13:49–60, 14:53–64, 15:42–46, 16:31–34, Figs. 1, 4A, 5–6; Ex. 1003 ¶¶ 56–64). For example, Petitioner contends that Giobbi ’139 “discloses that RDCs operate on battery power (such that the device including an RDC contains ‘a battery’.)” Id. at 26 (citing Ex. 1006 ¶ 89). In addition, Petitioner contends that “Dua discloses that its devices include an ‘internal battery 103.’” Id. at 27 (citing Ex. 1007 12:36–45, 13:49–60, Figs. 1, 5–6; Ex. 1003 ¶ 58). Petitioner also contends that Giobbi ’157’s RDC receives data from the PDK, and discloses “[t]he Reader 108 wirelessly communicates with the PDK 102 when the PDK 102 is within a proximity zone of the Reader 108.” Id. at 29–30 (citing Ex. 1005 ¶¶ 26–44, 50). Petitioner further contends that “Dua’s Reader Unit 304 is another example of an ‘integrated, wireless communication interface’ as “Reader Unit 304 also ‘communicat[es] wirelessly with at least one external device within a proximity zone’ and is ‘communicatively coupled to [an] integrated, secure memory’ (the RFID Tag Unit 306).” Id. at 31–32 (citing Ex. 1007, 6:46–65, 12:51–64, 13:9–18, 14:53–64, 15:42–56, 16:31–34, Figs. 4A, 6; Ex. 1003 ¶ 63) (alteration in original). Petitioner further provides detailed explanations as to why a POSITA” slip op. at 38
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Because the determination of whether the claims invoke § 112(f) comes down to “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” (Williamson, 792 F.3d at 1348), we find Dr. Traynor’s testimony that claim 1 recites sufficiently definite structure persuasive. Ex. 1032. As the Federal Circuit advised in Williamson, declarations and/or testimony of expert witnesses can play a large role in this determination. Williamson, 792 F.3d at 1348. Similarly, in Dyfan, the Federal Circuit found the district court ignored key evidence – unrebutted deposition testimony regarding how a POSITA would have understood claim terms at issue. Dyfan, 28 F.4th at 1367. In particular, the Federal Circuit in Dyfan found to be “key evidence” the expert’s explanation that the terms, themselves, connote structure, wherein, in combination with the recitation of the code or application’s operation would have connoted structure to a POSITA. Id. In this proceeding, we find persuasive Dr. Traynor’s testimony that a POSITA would have understood the terms “local, secured information stored by the integrated, secure memory,” and “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone,” to have “sufficient definite structure, such that a § 112, ¶ 6 interpretation is improper.” Ex. 1032 ¶ 4. In particular, we find persuasive Dr. Traynor’s testimony that the term “memory” alone has definite structure, and, for example, “is defined as the ‘capacity of a computer or integrated computer system for short and medium-term retention of digital data’ and speaks to a broad class of structures used to retain data for various purposes.” Id. at 5 (citing Ex. 1020, 5). According to Dr. Traynor, “not only does memory connote structure, but a POSITA would have recognized that memory can participate in ‘enabl[ing] one or more of an application, a function, and a service’ by simply storing information . . . necessary to access or otherwise invoke that application.” Id. at 6 (first alteration in original). Dr. Traynor’s testimony is consistent with the Specification of the ’960 patent, which describes a microchip that stores information in memory and responds through an antenna when probed. See Ex. 1001, 2:3–29. Similarly, we also find persuasive Dr. Traynor’s testimony that a “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone” also has sufficiently definite structure for performing the function of “enabling one or more of an application, a function and a service.” Ex. 1032, 8. In particular, we find persuasive Dr. Traynor’s testimony that “a POSITA would have understood that an ‘integrated wireless communication interface’ speaks to a class of structures used to connect to wireless networks.” Id. According to Dr. Traynor, “[a] POSITA also would have readily recognized that a ‘wireless communication interface’ is often used to ‘enable one or more of an application, a function, and a service’ by enabling wireless communication of information . . . necessary to access or otherwise invoke that application, function, or service.” Id. at 10. Dr. Traynor cites to various technical dictionaries to persuasively support his testimony. See Ex. 1021 (WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY), 11–12; Ex. 1023 (NEWTON’S TELECOM DICTIONARY), 5; Ex. 1024 (THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS), 5–7; Ex. 1025 (MICROSOFT COMPUTER DICTIONARY), 3–4. Thus, although Patent Owner argues that claim 1 invokes § 112(f) (PO” slip op. at 19
Patent outcomesUS 10,073,960 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960
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.