• Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.No claims unpatentable
  PTAB · Oct 10, 2025 · IPR2023-01461 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 2, 13, and 15–20 were not shown unpatentable because Petitioner failed to establish a sufficient motivation to combine Peev and Spitballs, including with Moorhouse.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties do not address the adopted level of ordinary skill in the art. See PO Resp.; Pet. Reply; PO Sur-reply. Based on the full record, we maintain and affirm that one of ordinary skill in the art would have had: a bachelor’s degree in mechanical engineering, industrial design, or equivalent, with at least one year of relevant experience designing projectile launching systems but would also be a member of a team, which would include a person with a chemical engineering), or has at least one year experience working with materials for use in consumer products and that “equivalent work experience may substitute for educational experience, and vice versa.” Pet. 21–22 (quoting Ex. 1015, 7–8); see also Ex. 1016 ¶ 55 (stating that “Patent Owner’s and Petitioner’s definitions of the [person of ordinary skill in the art] are similar, and my opinions in this Declaration would not change if I used Patent Owner’s definition of the [person of ordinary skill in the art] rather than Petitioner’s definition”). We find that the proposed level of ordinary skill in the art is consistent with the ’255 patent and the asserted prior art.” slip op. at 7

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

    “Neither Petitioner nor Patent Owner proposes any interpretation for any claim term. Pet. 23; see PO Resp. Petitioner notes that the ALJ in the ITC proceeding construed two terms used in the ’282 and ’683 patents, specifically “super absorbent polymer” and “a firing mechanism that directly applies a force to the ammunition.” Pet. 23 (citing Ex. 1015, 12, 14). Based on the full record, we determine that no term requires express construction to resolve the parties’ dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 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 8

  • Expert testimonyPetitioner expert discountedMixed

    “we give little weight to the opinion of Dr. Courtney on whether Spitballs would have been considered liquid filled by one of ordinary skill in the art. Pet. Reply 15–16; PO Sur-reply 18; Ex. 1037 ¶ 55; Ex. 2121, 61:12–13; see also PO Sur-reply 14–15 (arguing that Dr. Courtney does not meet the adopted level of ordinary skill in the art). We agree with Patent Owner that Petitioner’s list of “rubber, cork, foam, and soft plastics, such as SAPs” “does not exclude all of the other types of materials Petitioner failed to address—e.g., the gelatin materials used to make paintballs.” PO Resp. 24 (citing Ex. 2117, 1). The “openended” list “has no meaningful evidentiary support” because the cited paragraphs from its declaration “make no reference at all to potential airsoft ammunition.” Pet. 38; PO Resp. 24; Ex. 1016 ¶ 77; Ex. 1017 ¶¶ 36–39, 46– 48. Petitioner’s declarant Dr. Reitman also “acknowledged that airsoft considerations are beyond the scope of her testimony.” Ex. 2030, 117:17– 118:20. We agree with Patent Owner that Petitioner’s list would include “countless distinct polymers.” PO Resp. 25; Ex. 2120, 27–28.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “In other words, Petitioner does not squarely address the testimonial evidence that the softness of Spitballs would not have been equated with safety, because of its higher weight and kinetic energy. Ex. 2015 ¶¶ 44–55. We agree with Patent Owner that Petitioner does not assert fragmentation and deformation would have overcome the greater kinetic energy of the heavier Spitballs, and that Petitioner’s declarant admitted such calculation was not done. PO Sur-reply 7 (citing Ex. 2121, 48:11–49:7); Ex. 2121, 48:11–49:7 (Petitioner’s declarant testifying that calculations of how much kinetic energy is absorbed when Spitballs bounce or explode were not done). Petitioner’s declarant also identified that back splatter can create an additional safety concern. Ex. 2121, 101:14–104:4. We agree with Patent Owner that Petitioner failed to discuss the deformation and fragmentation of Spitballs in its Petition and declarations. PO Sur-reply 6 (citing Pet. Reply 10–11; Ex. 1037 ¶ 43). We also agree that Petitioner did not explain how one of ordinary skill in the art could have reliably assessed the safety of Spitballs and airsoft rounds. Id.; see also Ex. 2121, 47:1–48:10 (Petitioner’s declarant testifying that experimentation would be the best way to quantify how much kinetic energy is absorbed through deformation and fragmentation of a given projectile). focused on the mass and diameter calculations provided by Petitioner’s declarant, and Petitioner has the burden to analyze a projectile other than the one disclosed in Spitballs, not Patent Owner. PO Sur-reply 10–11 (citing Pet. Reply 13; Ex. 1017 ¶ 67; Ex. 2015 ¶ 59). Petitioner failed to do such an analysis of a 6mm Spitball or SAP projectile. Regarding Petitioner’s reliance on deposition testimony from the ITC proceedings, as argued by Patent Owner, its declarant agreed that making ammunition softer would make injury less likely, if all other parameters were equal, not larger and heavier like a substitution with Spitballs. PO Resp. 16–17 (citing Pet. 37; Ex. 1004, 531:25–532:9; Ex. 2015 ¶¶ 60–61); Ex. 1017 ¶ 67 (Petitioner’s declarant opining that Spitballs can “grow up to 200 times their original size” to reach a mass of 1.844g); Ex. 1037 ¶ 39 (Petitioner’s declarant agreeing that “when all other variables are held constant, heavier is less safe, meaning injury potential is increased”); Ex. 2015 ¶¶ 54–59 (Patent Owner’s declarant opining that heavier and softer ammunition can pose more injury risk); Ex. 2016, 11 (indicating that airsoft ammunition typically comes in weights from 0.12g to 0.25g). We, thus, agree with Patent Owner that Petitioner fails to prove that” slip op. at 16

  Patent outcomesUS 8,596,255 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,596,255
• The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24

  Patent outcomesUS 7,487,684 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,487,684
• Ford Motor Company / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentable
  PTAB · Sep 3, 2025 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 7 and 11 were not shown unpatentable as obvious over Park and IEEE 802.16-2004 because the combination did not teach a claimed mobile device.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In summary, the extrinsic record shows that, in the context of wireless network communications using the IEEE 802.16 standard, a “mobile device” is distinct from and excludes a device that is “fixed” or “portable,” where a “mobile” device is described as a device that is mobile during wireless network communications, and a “fixed” or “portable” device is described as a device that is fixed or slowly moving during wireless network communications. See Ex. 1005 ¶ 11; Ex. 1025, 24, 34, 38, 45; Ex. 2025, 71. This understanding of a “mobile device” from the extrinsic record is consistent with the language of claim 7 which recites a mobile device configured for wireless network communications (e.g., receiving an identifier and a signal from a base station), and consistent with the ’450 Patent disclosure that repeatedly and consistently utilizes the term “mobile device.” Accordingly, based on the record, we construe “mobile device” as a device that is mobile during wireless network communications, and is not fixed or slowly moving during wireless network communications.” slip op. at 19

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

    “We do not agree with Petitioner’s arguments because, as explained above in Section III.B., we construe “mobile device” as a device that is mobile during wireless network communications, and is not fixed or slowly moving during wireless network communications. Thus, after having considered both parties’ arguments and the cited supporting evidence, we are not persuaded that the combination of Park and IEEE 802.16-2004, including the application of Park to WiBro’s teaching of stationary or slowly moving devices communicating using band AMC, teaches or suggests a “mobile device,” as properly construed, that is configured to perform the limitations recited in the body of claim 7.” slip op. at 36

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “Under 37 C.F.R. § 42.123(a), a party may file a motion to submit supplemental information if the following requirements are met: (1) a request for authorization to file such motion must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which trial has been instituted. In addition to these requirements, the Board considers the motion in light of its mandate under 37 C.F.R. § 42.1(b), i.e., “to secure the just, speedy, and inexpensive resolution of every proceeding.”” slip op. at 41

  Patent outcomesUS 10,447,450 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,447,450
• Ford Motor Company / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentable
  PTAB · Sep 3, 2025 · IPR2023-00962 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 7 and 11 were not shown unpatentable as obvious over Park and IEEE 802.16-2004 because the combination did not teach a mobile device as construed.

  RulingsFinal written decision

  • Director reviewDirector review, grantedGranted

    “Ford requested Director Review of the Institution Denial Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Ford Institution Denial Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”). In addition, the Director sua sponte granted Director Review of the GM and Nissan Institution Denial Decision and, on March 22, 2024, vacated and remanded the GM and Nissan Institution Denial Decision for the same reasons as those set forth in the Director’s Decision. GM and Nissan IPR, Papers 12, 16.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “On November 9, 2023, we denied institution under § 314(a), after considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Ford Institution Denial Decision”). General Motors LLC and Nissan North America Inc. (“GM and Nissan”) filed a petition requesting inter partes review of claims 7 and 11 of the ’450 Patent and a motion for joinder with this proceeding. IPR2023- 00962 (“GM and Nissan IPR”), Papers 3, 4. On December 6, 2023, we denied institution under § 314(a) based on the petition filed in the GM and Nissan IPR after consideration of the factors set forth in General Plastic and Valve and denied the Motion for Joinder as moot on the basis of the Ford Institution Denial Decision. See GM and Nissan IPR, Paper 11 (“GM and Nissan Institution Denial Decision”).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Subsequently, pursuant to 35 U.S.C. § 314, we instituted trial on September 11, 2024, as to all of the challenged claims and all of the grounds raised in the Petition. Paper 30 (“Institution Decision,” “Dec. on Inst.”). We also instituted trial and granted the Motion for Joinder in IPR2023- 00962. See GM and Nissan IPR, Paper 18.” slip op. at 3

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Subsequently, pursuant to 35 U.S.C. § 314, we instituted trial on September 11, 2024, as to all of the challenged claims and all of the grounds raised in the Petition. Paper 30 (“Institution Decision,” “Dec. on Inst.”). We also instituted trial and granted the Motion for Joinder in IPR2023- 00962. See GM and Nissan IPR, Paper 18.” slip op. at 3

  Patent outcomesUS 10,447,450 not shown unpatentable
  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,447,450
• Cisco Systems, Inc. v. Umbra Technologies Ltd.No claims unpatentable
  PTAB · Aug 28, 2025 · IPR2024-00270 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 15–20 were not shown unpatentable because Hankins did not teach limitation 15.3; claims 1–14 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposal of the level of ordinary skill in the art. PO Resp. 6. Petitioner’s proposal is supported by the Reddy Declaration and is consistent with the ’595 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation in our obviousness evaluation below.” slip op. at 14

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

    “B. Claim Construction Beyond plain and ordinary meaning, Petitioner does not propose any term for claim construction. Pet. 13. Patent Owner does not argue any claim construction issue. See generally PO Resp. The argument and evidence provided by the parties regarding limitation 15.3 is dispositive. See Section II.E. below. Our analysis of limitation 15.3 does not turn on any claim construction question. Id. Accordingly, we do not need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). We apply the plain and ordinary meaning of all claim terms, as would have been understood by a person of ordinary skill in the art, in the context of the ’595 patent.” slip op. at 14

  • Adverse judgmentAdverse judgmentOther

    “D. Claims 1–14 as Obvious Over Kommula As already noted, Patent Owner has disclaimed claims 1–14. Ex. 3001. We do not analyze claims 1–14 as the challenge is mooted by the filing of the Statutory Disclaimer.” slip op. at 15

  • BurdenNot shown unpatentable

    “350 receiving a request for a listing of “services” from a gateway device and provisioning one or more tunnel servers has not been shown to teach generating “a list of available servers.” There is no persuasive evidence to support Petitioner’s assertion. Petitioner relies on unsupported argument because, at best, Hankins discloses gateway devices 311 and 321, each of which is located in different logical broadcast domains, requesting services from one another. Ex. 1005, 12:9–16. This particular disclosure, however, does not appear to implicate the functionality of Hankins’s controller 350, much less result in controller 350 generating a list of available tunnel servers that would allow gateway devices 311 and 312 to exchange a listing of “services” therebetween. Petitioner’s reliance on Hankins’s controller 350 provisioning additional tunnel servers both to improve performance and without human intervention fares no better. Ex. 1005, 25:45–55. There is no indication in Hankins that this provisioning performed by controller 350 is done in response to receiving a request for a list of available tunnel servers from either gateway device 311 or 312.” slip op. at 20

  Patent outcomesUS 11,108,595 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,108,595
• Cisco Systems, Inc. v. Portsmouth Network Corp.No claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00503 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the asserted obviousness combinations did not cure the failure to show the claimed request and routing steps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in the field of the ’279 patent in January 2001 “would have had a working knowledge of the network communication technologies that are pertinent to the ’279 patent, including network flow allocation in a ring topology.” Pet. 12. More specifically, Petitioner argues, a person of ordinary skill in the art “would have had a master’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience relating to network communications and resource allocations,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Id. (citing Ex. 1003 ¶ 20). Patent Owner represents that it “does not dispute Petitioner’s definition” for the purposes of its Response. PO Resp. 5. We find Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art and the ’279 patent, and, therefore, we likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 11

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

    “Neither party contends that any formal claim construction is necessary. See Pet. 12 (“Petitioner submits that, for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.”); PO Resp. 4 (“Here, at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’279 Patent’s claim terms.”). Patent Owner notes, however, that Petitioner had asserted specific constructions in the Cisco litigation for the term “predetermined,” as recited in claims 1, 10, 14–16, and 18, and for the term “quantum.” PO Resp. 4. Specifically, according to Patent Owner, Petitioner proposed that “predetermined” be construed as “determined before the data flow request” and that “quantum” be construed as “an amount of a requested resource by which to increase or decrease.” Id. (citing Ex. 2007). Patent Owner contends asserted prior art combinations disclose or render obvious the challenged claims under these constructions. Id. Because our conclusion that Petitioner has not demonstrated that any of the challenged claims are unpatentable does not turn on the construction of either “predetermined” or “quantum,” there is no need for us to construe those terms. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We again are not persuaded by Petitioner’s argument. As an initial matter, we find no argument with respect to “best effort data traffic” or dropped packets in the Petition. See Tr. 12:10–21 (conceding that “the phrase ‘best effort’ was not in the Petition” but arguing that it was raised in response to the Patent Owner Response). Moreover, we are unable to identify any argument in the Patent Owner Response to which this line of argument is properly responsive, and Petitioner does not identify any such line of argument. Instead, Petitioner’s argument appears to advance belatedly a new theory. See 37 C.F.R. § 42.23(b); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 73–74, available at” slip op. at 43

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedMixed

    “We credit the supporting testimony of Dr. Olivier on the points discussed above, as it is explained sufficiently and consistent with the testimony simply mirrors the Petition and does not explain sufficiently why a person of ordinary skill in the art would have understood Kovvali in the manner Petitioner asserts. See Pet. 35; Reply 17–18; Ex. 1003 ¶ 83.” slip op. at 44

  Patent outcomesUS 7,035,279 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,035,279
• Visa, Inc. v. Cortex MCP, Inc.No claims unpatentable
  PTAB · Jul 22, 2025 · IPR2024-00488 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because the Petition did not establish the claimed second OVER file over Oborne or a sufficient basis to combine Stafford and Purves.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 9–13 (referring to the ’854 patent Specification, the language of claim 1, and Dr. Shamos’s testimony). However, we did not determine whether an “OVER file” included “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file,” because it was not necessary for purposes of Institution. Id. Moreover, we determined that Petitioner had made a sufficient showing that Oborne’s tokens qualified as “OVER files.” Id. at 11, 24–31. Patent Owner argues that no construction is required, but, regardless, “the claims may be confirmed under the Board’s construction.” PO Resp. 11; Sur-reply 1. Petitioner also does not dispute our preliminary construction. Reply 1. In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Reply 1–2 (citing PO Resp. 49–50). “For example,” Petitioner asserts, “verification in subsequent claim elements involves the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things, as PO’s expert admits.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner

    “In its Response, Patent Owner stated that it “agrees in substance with the Board’s construction” of this term, and clarified its understanding of that construction as requiring that “the issuing agency has verified the ‘virtual representation’ (and not the ‘credential’) to be ‘a first official representation of the original credential.’” PO Resp. 11–12. In its Reply, Petitioner points to Patent Owner’s reliance on an example in the ’854 patent Specification involving the checking of a driver’s license identification number against a DMV database to show verification of information in an OVER File generation request. Reply 2 (citing PO Resp. 14–16; Ex. 1002, 6:35–39, 6:54–65). Based on this portion of the Patent Owner Response, as well as portions of Dr. Malek’s deposition, Petitioner argues that Patent Owner “admits that a virtual representation of the credential may be ‘verified by an issuing agency’ by checking credential data against an issuing agency database.” Id. (citing Ex. 1047, 37:24–41:1, 41:2–22). In its Sur-reply, Patent Owner argues that Petitioner misinterprets its discussion of the DMV example, and contends that what Patent Owner was actually arguing based on that example is that the “credential” (the “OVER file”) is verified, not that “credential data” is verified. PO Sur-reply 1–3. After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of a credential.” Inst. Dec. 15–16. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “agrees with [Petitioner’s proposed] definition of the level of ordinary skill in the art.” PO Resp. 10 (citing Ex. 2009 ¶¶ 37–41). In the Institution Decision, we found Petitioner’s proposed level of ordinary skill in the art to be reasonable and consistent with the problems and solutions disclosed in the prior art of record. Inst. Dec. 8. Given that Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art, we continue to apply Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Although we agree with Petitioner that Oborne teaches that “‘device fingerprinting may be utilized’ to provide ‘additional security’ for use of Oborne’s tokens,” Pet. 34 (citing Ex. 1011 ¶ 26 (emphasis added)), we do not agree with Petitioner’s arguments related to “device fingerprinting.” Petitioner also relies on testimony from Dr. Shamos to support its position. However, Dr. Shamos’s cited testimony in paragraph 239 merely repeats what is stated in the Petition, does not provide citation to any other evidence of record, and does not provide any further explanation as to why one of ordinary skill would have been motivated to use device fingerprinting to tie a given token to a given device such that the token for the second device would be invalid in the first device. Ex. 1005 ¶ 239. Dr. Shamos refers to Oborne’s disclosures on “digital fingerprinting” and a client’s MAC address in the token data structure. Id. (citing Ex. 1011 ¶¶ 26, 47). We have considered Petitioner’s arguments in light of Oborne’s disclosure, but find Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for a second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. Id. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys., 821 F.3d at 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of” slip op. at 24

  Patent outcomesUS 9,954,854 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,954,854
• AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.No claims unpatentable
  PTAB · Jul 14, 2025 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Final written decision

  The Board granted Patent Owner’s revised non-contingent motion to amend, canceling claims 1–4 and substituting claims 7 and 8, which Petitioner did not prove unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). A “patent owner bears the burden of persuasion to show, by a preponderance of the evidence, that the motion to amend complies” with the applicable statutory and regulatory requirements. 37 C.F.R. § 42.121(d)(1). Specifically, a patent owner must demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent; and (4) the amendment does not introduce new matter. See 35 U.S.C. § 316(d); 37 C.F.R. § 42.121(a)–(b). For the reasons explained below, Patent Owner satisfies its burden of persuasion to show that the amendments comply with the applicable statutory and regulatory requirements.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision is the same regardless of whether the length of experience is two years or three. We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). Accordingly, we adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the recited second type SIBs exclude first type SIBs. The plain meaning of “first type” and “second type” indicates that the first type and second type are different in kind. RMTA 22 (App. A). Our interpretation is consistent with the Specification, which explains that second type SIBs exclude first type SIBs. As Patent Owner points out, the ’958 patent discloses “first type of system information (1TYP SIB) is . . . essential . . . for initial system access” and “second type of system information (2TYP SIB) is nonessential system information . . . defined as all other types of information, and thus excludes the [] information required for initial access.” Id. at 11–12 (citing Ex. 1001, 8:34– 46); see also Ex. 1001, Abstract (interchangeably using the terms second type and non-essential). Despite Petitioner’s argument that this disclosure is non-limiting and directed to a disclaimed example embodiment (Opp. 8–9), Petitioner could not identify any embodiment, among the approximately forty disclosed embodiments, describing something other than the first type SIB being essential information and the second type SIB being non-essential information. Tr. 22:18–26. Even the Petition acknowledges that “the ’958 Patent further classifies a second type of system information, the ‘non-essential’ SI, which is defined as all other types of information excluding that first type of information required for initial access.” Pet. 5. Furthermore, the prior art of record suggests that a person of ordinary skill would have understood second type SIBs exclude first type SIBs. See Ex. 1008 ¶ 48 (describing two categories of system information, “essential SI” and “Other SI”). Patent Owner’s expert also understood the recited first and second type SIBs as being mutually exclusive. See Ex. 1011, 49:10–13. For the above reasons, we do not agree with Petitioner that the recited second type SIB lacks any requirements, nor do we interpret claims 7 and 8 such that the first type SIB could be a second type SIB.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “(d) Limitation 7h: Analysis We agree with Patent Owner that Petitioner’s arguments with respect to limitation 7h are insufficient because they fail to address the limitation as written and improperly incorporate previous arguments by reference. For example, Petitioner did not map the recited “group identifier” when opposing Patent Owner’s Revised Motion to Amend. See Opp. 16–17. In its Sur-reply, Petitioner contends that limitation 7h’s requirement of transmitting the group identifier was previously “set out in Patent Owner’s prior papers,” but does not refer to any specific papers or exhibits. Pet. Surreply 11–12. We decline to search for and piece together Petitioner’s arguments and evidence to develop a persuasive theory of unpatentability. See 37 C.F.R. section 42.6(a)(3). Petitioner similarly failed to address adequately where Lee discloses or suggests the recited “compressed format” and “plural parameters.” See Opp. 16–17. Aside from the above concerns, we also do not see sufficient explanation with respect to limitation 7h’s requirement that the transmitting by broadcast be based on a comparison of the value tag. Petitioner argues that, because Patent Owner does not dispute limitation 7g, “it would have been obvious to a POSITA to use the same value tag[] to determine the system information broadcast in Lee’s compressed format embodiment.” Pet. Sur-reply 12. This conclusory statement is not supported by any citations to evidence and was improperly introduced in the Sur-reply. Moreover, whether it was obvious to determine what system information is broadcast is not commensurate with the claim scope because limitation 7h requires that the broadcasting (not the broadcast content) be based on a comparison of the value tag. See supra III.B.4 and IV.B. Further, we are not persuaded that Lee’s transmitting by broadcast is” slip op. at 26

  Patent outcomesUS 10,841,958 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,841,958
• Gene Company Pty Ltd v. The Trustees Of Columbia University In The City Of New YorkNo claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00313 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–54 were not shown unpatentable because Petitioner failed to establish a reasonable expectation of success for the proposed combinations; objective indicia also supported non-obviousness.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “As to the first issue, we agree with Patent Owner that defining the level of skill in view of the solution described in the patent risks improper hindsight. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 18 (“[T]he level of skill in the art is a . . . lens through which . . . the Board views the prior art and the claimed invention,” which “prevents . . . factfinders from using their own insight or . . . hindsight[] to gauge obviousness.”). We therefore do not include “practical knowledge about . . . the deuterium isotope effect, including the patents and publications discussed [in the Petition],” as part of our definition of a person of ordinary skill in the art.” slip op. at 18

  • Expert testimonyPetitioner expert creditedMixed

    “person of ordinary skill in the art would employ” in an obviousness analysis, we give some weight to Dr. Guengerich’s testimony. KSR, 550 U.S. at 418; Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (explaining that “motivation to combine may be found. . . in . . . the background knowledge, creativity, and common sense of the person of ordinary skill”). Nevertheless, even if we were to agree that an ordinarily skilled artisan would have seen the 1,5-shift in NRPE in Mata’s A2E biosynthetic pathway as a particularly desirable location for intervention, we are not persuaded that such a person would have been motivated to substitute C20 deuterated vitamin A for the vitamin A in Ortho Pharma’s composition and method, because Petitioner has not shown, by a preponderance of evidence, that such an artisan would have reasonably expected the substitution to retard the accumulation of A2E or to treat macular degeneration.” slip op. at 42

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “In our Institution Decision, we preliminarily construed the preamble of claim 28 as limiting. Inst. Dec. 30–31. Petitioner did not take issue with our construction, or dispute Patent Owner’s construction of the preambles of claims 1 and 29 as also limiting. After consideration of the full trial record, we maintain our construction of the preamble of claim 28 as limiting for the reasons set forth in our Institution Decision. For similar reasons and the reasons set forth in Patent Owner’s Response, we further construe the preambles of claims 1 and 29 as limiting. See PO Resp. 12–14. We further determine that we do not need to construe any other claim term in order to resolve the controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 26

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

    “415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.” slip op. at 25

  Patent outcomesUS RE47,045 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.No claims unpatentable
  PTAB · Jun 10, 2025 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 14–16, 18, 27–29, 31, and 32 were not proven unpatentable because the asserted references failed to establish the claimed airflow path or a reason to make the proposed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s and Patent Owner’s proposed levels of skill are similar and differ in that Petitioner’s relevant degrees and corresponding two years of experience additionally includes “industrial design” and “product design” and familiarity with “electrically powered vaporizing articles, their components or the underlying technologies” where Patent Owner requires two years of experience “designing electro-mechanical consumer products or an advanced degree.” Compare Pet. 7, with PO Resp. 2. Patent Owner alleges that “Petitioner has failed to establish unpatentability under either standard,” indicating that the level of skill in the art is not a dispositive issue. PO Resp. 3. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We note that the outcome of this Decision would be the same under Patent Owner’s proposed definition.” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “In this case, Mr. McAlexander meets both Petitioner’s and Patent Owner’s proposed level of skill in the art. As a result, we are persuaded Mr. McAlexander has the requisite skill and relevant expertise to offer testimony in this matter. For example, Mr. McAlexander has a Bachelor’s Degree in Electrical Engineering and far more than 2 years of experience in the electrical engineering field. Ex. 1027, 3–6, 7. In addition, Mr. McAlexander has provided expert consulting services in a wide range of technology areas involving the process and design of electro-mechanical consumer products. Ex. 1003 ¶ 5. Through one of Mr. McAlexander’s business ventures, his laboratory has “performed detailed airflow analyses, designing and constructing specialized apparatuses to emulate human breath, allowing for precise activation testing of ENDS devices.” Ex. 1043 ¶ 16. That said, a declarant’s expertise, even clothed as a skilled artisan, does not entitle a naked opinion persuasive weight. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Here, Patent Owner had the opportunity to, and in fact did, thoroughly cross examine Mr. McAlexander about the purported deficiencies in his testimony. See, e.g., Exs. 2052, 2054; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (“Vigorous cross examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”). Therefore, to the extent Patent Owner credibly identifies deficiencies in Mr. McAlexander’s testimony or that testimony lacks factual support or is based on broad, conclusory assertions, we will assign appropriate weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (explaining that it is within the Board’s discretion, as the trier of fact, to accord appropriate weight to the evidence presented).” slip op. at 12

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

    “Petitioner contends that the parties proposed a construction for “pressure valve,” a limitation appearing in claims 18 and 31, during the ITC investigation. Pet. 7 (citing Ex. 1001, 41:58–65). Patent Owner contends that the terms of the ’123 patent should be given their plain and ordinary meaning. PO Resp. 4. Because resolution of the issues presented in this case do not require construction of the term “pressure valve,” we do not expressly construe this claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. “The requirement that the prior art elements themselves be arranged as in the claim means that the claims cannot be treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Indeed, the prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Net MoneyIN, 545 F.3d at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id.” slip op. at 20

  Patent outcomesUS 10,130,123 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,130,123

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.