- Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentablePTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.
RulingsFinal written decision- BurdenFwd all claims patentableNot shown unpatentable
“4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10
Patent outcomesUS 10,958,840 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentablePTAB · Nov 25, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Shi does not disclose the claimed low-light high-pass parameter required by the asserted obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Given the teachings of the specification, we agree with Patent Owner that a low-light high-pass parameter is a parameter of a smoothing function that favors high frequencies (high pass) when exposure times are long (low light). See Tr. 42:10–18 (Patent Owner’s counsel stating that “high-pass” means “there’s a bias or preference for high frequencies”); Ex. 2020, 93:23– 94:15 (Petitioner’s declarant, Dr. Katsaggelos, agreeing that a high-pass system attenuates the low frequency of a signal). Although we acknowledge Petitioner’s position that the specification provides other ways or considerations in implementing a smoothing function, based on our above analysis of the specification, we find that the specification describes the lowlight high-pass parameter as a specific component of a smoothing function. See, e.g., Ex. 1001, 21:17–25 (setting out several parameters besides the low-light high-pass parameter used in trajectory smoothing).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“position and a real device position. Id. at 18:27–40. In other words, the blur is addressed by analyzing the image to identify motion and then shifting the image. Shi, however, does not disclose how its parameter is based on low light (or the long exposure times indicative of low light). In its Petition, Petitioner asserts that a person of ordinary skill in the art would understand that “blurs can be caused by low light conditions.” Pet. 28 (citing Ex. 1003 ¶ 111). Although this is true, that does not mean that Shi’s blurs are identified by a parameter that considers low light. As we just described, Shi identifies the blur by quantifying the amount of motion of the points in an image, not by identifying low light. This is simply a different way to determine the presence of motion blur. In Shi, blur is measured, whereas in the ’840 patent, it is inferred based on low-light conditions (e.g., by observing the exposure time). See, e.g., Ex. 1007, 18:7– 26; Ex. 1001, 19:12–26. In its Reply, Petitioner does not point to any further disclosures. Accordingly, we find that Shi does not disclose the “low-light” aspect of the claimed low-light high-pass parameter. This is sufficient to determine that Petitioner’s ground does not meet all claim limitations. Similarly, we find that Shi does not disclose the “high-pass” aspect of the parameter. Shi’s blur compensation uses a spherical interpolation to modify the image. Ex. 1007, 18:27–40. The low-light high-pass parameter, as we have construed the term, allows more high frequencies. To allow more high frequencies, this necessarily means either allowing fewer low frequencies, or allowing more high frequences as opposed to some counterfactual situation in which fewer high frequencies were going to be allowed. See Ex. 2020, 94:23–95:15; Ex. 2022. We are directed to no persuasive evidence from Petitioner that Shi’s spherical interpolation favors high frequencies over low frequencies. Accord Ex. 2018 ¶ 107 (Patent Owner’s expert stating that Shi’s spherical interpolation “reintroduce[es] both high- and low-frequency motion”). Even if Shi allows the viewing window to track the camera position “consistent with the natural blur in the image” (Ex. 1007, 17:63–67), we are not provided with sufficient evidence to conclude by a preponderance of the evidence that providing a similar visual goal as a high-pass parameter (Ex. 1001, 22:16–18, “the output motion may include high frequencies that mask motion blur”) is the same as having a high-pass parameter. Again, merely preserving high frequencies is not the same as having a “high-pass parameter” because, as construed, a “high-pass parameter” also involves some degree of attenuation of low frequencies or relative increase of high frequencies. Accordingly, we find that Shi does not disclose the “high-pass” aspect of the claimed low-light high-pass parameter.” slip op. at 18
Patent outcomesUS 10,958,840 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - Texas Instruments Incorprated v. Parkervision, Inc.All claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00934 · APJ Michael R Zecher · IPR · Final written decision
Claims 19–21 are unpatentable as obvious over DeMaw and, separately, over Macnally.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“1. Principles of Law A claim is unpatentable under § 103(a) if the differences between the” slip op. at 16
Patent outcomesUS 7,496,342 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,496,342 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 21, 2025 · IPR2025-00906 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 14 (citing Ex. 1003 ¶¶ 39–42). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 7. Based on the record presented, including our review of the ’434 patent and the types of 2 Petitioner states that it “assumes for purposes of [its Petition] that the claims are entitled to the earliest claimed priority date—November 5, 2019.” Pet. 14; see Ex. 1001, code (60). problems and solutions described in the ’434 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 10. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 49. He explains in detail how, based on his experience, emails sent to a 3GPP email exploder were accessible on the email archive immediately after being sent. Id. ¶¶ 44–60, 72–80. That explanation is supported by screenshots from various websites and other corroborating evidence. See Ex. 1008 ¶¶ 44–60, 72–80. The November 3, 2019, email with 3GPP-38.213-CR as an attachment is currently available to the public via the email archive, with no login, password, or membership required to access it. Id. ¶¶ 44, 74; see Kyocera, 545 F.3d at 1351 (“[ETSI] specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”). The metadata for the file indicates that it was created and last modified one day before the email was sent. Ex. 1008 ¶ 76. And Mr. Rodermund discusses one example where a listserv email was uploaded to the archive just minutes after being sent. Id. ¶¶ 50–51. Although that example is from 2025 rather than 2019, it provides some support for his opinion that the same “near contemporaneous” timing would have been the case in 2019 as well. See id. ¶ 52. Immediately making emails like the one with the 3GPP-38.213-CR change request available on the email archive is consistent with 3GPP’s overall purpose of making standards documents available “so that engineers and other individuals would have ready access to them when developing and implementing cellular networks and devices.” See id. ¶ 35; Kyocera, 545 F.3d at 1351 (finding that the “primary purpose of the [standard at issue] was to develop a system interoperable across national borders,” which “made it crucial to grant access to any interested parties”); Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46 at 13–14 (PTAB Jan. 18, 2022) (finding, based on the preponderance of the evidence, that “testimony concerning [a 3GPP] email exploder and listserv provide further support for a conclusion of public accessibility because it tends to show that 3GPP was known beyond its members, that the meetings were widely publicized, and that 3GPP documents were, in general, widely available”). Finally, Mr. Rodermund explains in detail how a person of ordinary skill in the art could have accessed the email with 3GPP-38.213-CR, using the indexing of the email archive. See Ex. 1008 ¶¶ 49, 53–60. We are persuaded that Mr. Rodermund’s testimony and supporting evidence are sufficient at this stage. Patent Owner will have the opportunity to cross-examine Mr. Rodermund and explore the bases for his statements. And our ultimate determination of the weight to be given to his testimony will be based on the complete record at the end of trial. Based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that 3GPP-38.213-CR is a prior art printed publication under 35 U.S.C. § 102(a)(1).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“is that Petitioner has not shown sufficiently that 3GPP-38.213-CR and 3GPP-38.212-CR are prior art printed publications. Prelim. Resp. 2–10. We disagree on this record for the reasons explained above. See supra Section II.D.4. Patent Owner does not dispute Petitioner’s arguments regarding the limitations of claim 1 or Petitioner’s asserted motivation to combine the references. See Prelim. Resp. 2–10. Petitioner’s contentions are supported by the testimony of Dr. Mandayam and are persuasive based on the current record. See Pet. 14–48; Ex. 1003 ¶¶ 52–67, 81–113. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 28
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 10,965,434 - Google LLC v. Cellular South, Inc.Institution deniedPTAB · Nov 21, 2025 · IPR2025-00877 · APJ William V Saindon · IPR · Institution
The Board denied institution for claims 1–11 because the Zhao-Kouzani combination did not sufficiently show a fractal representation based on landmarks.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’853 patent is unpatentable, and we do not institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“generally known in the art, and that this is acknowledged by the ’853 patent. Pet. 40–41 (citing, e.g., Ex. 1001, 15:40–44). Petitioner asserts that Kouzani touts the benefits of fractal models and that it would have been obvious to use Kouzani’s fractal model as the object model in Zhou. Pet 44 (asserting that “[a] person of ordinary skill would have therefore been motivated to implement Kouzani’s techniques in Zhao’s system”); see also id. 42–45. (entire argument). Patent Owner argues that Kouzani’s fractals would not result in the claimed limitation. Prelim. Resp. 21–23. In particular, Patent Owner points out that Kouzani’s fractals use a block-based fractal system, which do not include “a representation of the object based on landmarks associated with the object” as required by claim 1. Id. at 21–22. Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner’s argument is persuasive. Even if Kouzani teaches fractals, claim 1 is not broadly claiming any fractal, but rather one that is “based on landmarks” (e.g., eyes, nose, etc.). See Ex. 1001, 13:53–57. The block-based system of Kouzani is based on abstract, repeated patterns of pixels, without regard to what the pixels represent. See, e.g., Ex. 1006, 8 (describing a “search . . . through the domain pool to find a domain block whose contractive transformation best approximates the range block” and then storing all of the transformations that, together, “represent the compressed image of a person’s face”), Fig. 4 (showing example blocks). This is in contrast to looking for particular landmarks in the image. Thus, we find that Petitioner has not sufficiently established that Kouzani’s fractal is based on landmarks. In Petitioner’s ground, Petitioner asserts that Zhao already teaches the claimed landmarks (Pet. 39, citing Ex. 1003 ¶¶ 58, 65), but Petitioner’s ground replaces or modifies the object model of Zhao with the fractals of Kouzani, which are not based on landmarks. Petitioner does not explain how Zhao’s modified model, now using a block-based fractal system, would still have the landmarks of Zhao’s original model. Even if it were obvious to include fractals, we are persuaded that the fractals included by Kouzani are not based on landmarks. Alternatively, if Petitioner is asserting merely to use fractals in Zhao’s models, then Petitioner has not sufficiently accounted for the particular fractals claimed and explained persuasively how merely using fractals in Zhao would lead to the claimed subject matter, i.e., fractals based on landmarks. In either event, Petitioner has not sufficiently established that the proposed combination satisfies the “fractal includes a representation of the object based on landmarks” limitation of claim 1.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13 (quoting in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,126,853 - PTAB · Nov 14, 2025 · IPR2025-00911 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314 to determine whether to 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, 584 U.S. 357, 363–66 (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) (2024); 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 demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’615 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’615 patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 3. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’615 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “configuration parameters comprising first random access parameters, for beam failure recovery.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “configuration parameters comprising first random access parameters, for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “configuration parameters comprising first random access parameters, for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “configuration parameters comprising first random access parameters, for beam failure recovery.” Thus, we agree with Petitioner that the “configuration parameters comprising first random access parameters, for beam failure recovery,” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “configuration parameters [that] may indicate the maximum number of beam of beam failure counter” are such parameters for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As the Petition’s citations suggest, these are substantially the same as examples identified in the ’615 patent. See Pet. 15–16 (citing Ex. 1001, 63:18–23, 41:65–67; Ex. 1003 ¶ 56). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. at 16 (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A–C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶ 57). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the configuration parameters must be received in a single message. Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “configuration parameters, comprising first random access parameters, for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,637,615 - PTAB · Nov 14, 2025 · IPR2025-00910 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR of claims 1–19 on all asserted grounds after finding a reasonable likelihood that Apple would prevail on at least one claim, including over Cirik alone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’128 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’128 patent “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 4. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’128 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “first configuration parameters for beam failure recovery, comprising first random access parameters.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “first configuration parameters for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “first configuration parameters for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “first configuration parameters for beam failure recovery, comprising first random access parameters.” Thus, we agree with Petitioner that the “first configuration parameters for beam failure recovery” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “one or more configuration parameters [that] may indicate the maximum number of beam of beam failure counter” is such a parameter for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As Petitioner correctly notes, these are substantially the same as examples of “first configuration parameters for beam failure recovery” identified in the ’128 patent. See Pet. 15 (citing Ex. 1001, 63:9–12, 41:65–67; Ex. 1003 ¶ 53). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A– C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶¶ 54–55). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the first configuration parameters must be received in a single message. Indeed, the claim language explicitly permits “one or more messages.” Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “first configuration parameters for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘first configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,979,128 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00909 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Ying and Yang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner’s contentions are supported by the testimony of Dr. Akl and are persuasive based on the current record. See Pet. 7–28; Ex. 1003 ¶¶ 58–83. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). 4. Claims 2–20 Patent Owner does not argue dependent claims 2–20 separately. Prelim. Resp. 3–5. On this record, we disagree with Patent Owner’s arguments regarding parent claim 1 and are persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. See supra Section II.D.3. Accordingly, we need not determine at this time whether Petitioner also has shown a reasonable likelihood of prevailing as to any of the other challenged claims. See 37 C.F.R. § 42.108(a).” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 6–7. Patent Owner states that “claim construction is not required to resolve any issues.” Prelim. Resp. 2. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’695 patent (November 2019),4 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–32). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 2. Based on the record presented, including our review of the ’695 patent and the types of problems and solutions described in the ’695 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Claim 1 a) Petitioner’s Contentions Petitioner argues that Ying and Yang collectively teach all of the limitations of claim 1 and a person of ordinary skill in the art would have been motivated to combine their teachings, with a reasonable expectation of success. Pet. 11–28. As to the combination of references, Petitioner asserts that a person of ordinary skill in the art “would have been motivated to include configuration parameters for both the NUL and SUL carriers, as taught in Ying, in a single DCI, as expressly depicted in Yang, to coordinate both normal uplink (NUL) and supplemental uplink (SUL) transmissions in a mobile communication environment.” Id. at 12 (citing Ex. 1003 ¶¶ 58–59). According to Petitioner, “[t]he combination involves coordinating both carriers already operating in the mobile communication environment by implementing Ying’s DCI example (e.g., in Listing 6) to provide cancellation indications for both the normal uplink (NUL) and the SUL in one DCI,” achieving the “predictable result” of “improv[ed] communication capacity, speed, flexibility, and/or efficiency.” Id. at 12–13 (quoting Ex. 1004, col. 1, ll. 31–41). Petitioner also alleges various other reasons for why a person of ordinary skill in the art would have been motivated to combine the references’ teachings in that manner, including “reduced communication overhead,” simplification of the UE’s decoder operation, and the need to choose from only two options (i.e., “using one DCI to encode both NUL and SUL carriers . . . or using two DCIs”). Id. at 13–17 (citing Ex. 1003 ¶¶ 60–64).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,986,695 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,139,944 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 5, 2025 · IPR2025-00895 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted challenges after finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have had at least [a bachelor’s degree in] electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. . . . A POSITA would also have familiarity with the 3GPP LTE standards, and would have understood how to search through the available Technical Specifications for implementing RAN technologies. Pet. 21–22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage, with a proposed modification to insert “a bachelor’s degree in” to Petitioner’s statement. Prelim. Resp. 12–13; id. at 12, n.1. We have inserted this proposed modification in brackets in the above block quotation. We are persuaded, on the present record, that Petitioner’s proposal, as modified by Patent Owner, is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s skill definition at this stage.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not propose any claim constructions. See Pet. 11–12; Prelim. Resp. 8. As no terms are in dispute, we determine that no terms require construction at this stage.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION At this stage of the proceeding, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges as to at least one challenged claim. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of all challenged claims of the ’113 patent is instituted with respect to all challenges of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing on the entry date of this Decision.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“measurement value, as Jover teaches.” Id. (citing Ex. 1005 ¶¶ 39–40; Ex. 1003 ¶¶ 115–30). Among other reasons, Petitioner contends that a POSITA would have been motivated to combine “to improve the accuracy and reliability of the beam failure determination.” Id. at 37 (citing Ex. 1003 ¶¶ 115–30). Petitioner further contends that a POSITA would have had a reasonable expectation of success because “it would have been straightforward for a POSITA to implement Jover’s triggering condition in Xia’s method.” Id. at 38 (citing Ex. 1003 ¶¶ 115–30). After considering Patent Owner’s arguments, which we address below, we agree with Petitioner at this stage that the combination of Xia and Jover renders obvious limitation [1e]. Patent Owner first argues that Jover “does not cure the deficiencies of Xia because Jover’s threshold condition for an increase in BER is not used for triggering a transmission of the first and second radio signal.” Prelim. Resp. 20. Just like Xia, Patent Owner contends, Jover discloses no “causality between the threshold being exceeded and transmitting the first and second radio signal.” Id. at 21. This argument does not undermine Petitioner’s showing at this stage because Petitioner relies on Xia, not Jover, for the claimed “triggering the transmission,” or “causality,” as Patent Owner calls it. See Pet. 36–38. That is, Petitioner relies on Jover for the triggering condition and on Xia for the actual triggering. See id. Patent Owner’s argument attacking the references individually is unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of refences.”). Patent Owner next contends that one of ordinary skill in the art would not have combined Xia and Jover “since Jover is directed to the opposite objective of the ’113 Patent or Xia.” Prelim. Resp. 21. That is, Patent Owner asserts, Jover teaches away from the disclosed methods. Id. at 22. Patent Owner explains, “Jover provides no attempt to improve the beam strength, but rather ignores it through beam sweeping or nullif[ies] it, in contrast to the purpose of the ’113 Patent.” Id. at 22–23. At this stage, Patent Owner’s argument is insufficient to undermine” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 10,568,113
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.