• K/S Himpp v. Bragi GmbHAll claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00901 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–16 are unpatentable under § 103 over the Hensen-based combinations, including combinations with the LG Manual or Lee.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposals are very similar, and we find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In addition, Petitioner filed the Declaration of Brian W. Anthony, Ph.D. and the Reply Declaration of Brian W. Anthony, Ph.D. in support of its Petition.8 Ex. 1002 (“Anthony Decl.”); Ex. 1033 (“Anthony Reply Decl.”).” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “This Manual has been designated guidance document USPTO- P-1. The contents of this document do not have the force and effect of law and are not meant to bind the public in any way. This document is intended only to provide clarity to the public regarding existing requirements under the law or agency policies. However, given that, to our knowledge, there is no pertinent case law on this issue, we find the PTO guidance to be a persuasive interpretation of the statute. See Tr. 34:2–12, 48:1–4. Thus, we follow the PTO guidance, which explicitly requires that the exceptions of 35 U.S.C. 102(b)(1)(B) are only applicable when the subject matter” slip op. at 14

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

    “Other than disputing the prior art status of the Hensen Video, which as discussed above is unfounded, Patent Owner does not specifically challenge the motivation for combining the Hensen Patent and the Hensen Video. See generally PO Resp. We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinning for the proffered combination, and has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine the Hensen Patent and the Hensen Video as argued.” slip op. at 24

  Patent outcomesUS 10,635,385 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,635,385
• Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8

  • PTAB / AIA Trials › §315(e) estoppelMixed

    “Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9

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

    “caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13

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

    “to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26

  Patent outcomesUS 10,681,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,009
• Nearmap US, Inc. v. Pictometry International Corp.Institution denied
  PTAB · Oct 10, 2024 · IPR2024-00729 · APJ Russell E Cass · IPR · Institution

  The Board denied institution on all grounds because the Petition did not sufficiently explain how the asserted references teach claim 1’s control data limitation or establish unpatentability of the challenged claims.

  RulingsInstitution decision

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

    “The question before us is not whether we could come up with a way to understand how the asserted prior art could render the challenged claims unpatentable, but rather did Petitioner provide the arguments and evidence to show that the challenged claims are unpatentable. Here, Petitioner has not met that burden and as such, Petitioner has not shown by a reasonable likelihood that any of the challenged claims are unpatentable.” slip op. at 22

  • BurdenDenied

    “contentions with sufficient particularity. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”). We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 20

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We also agree that, to the extent Petitioner is relying on Dr. Forsyth to supply arguments and explanations missing from the Petition, such reliance is improper. For example, Petitioner’s string cite parenthetical for limitation [1.d] is less than one page, but the cited portions of Dr. Forsyth’s testimony comprise about 13 pages, along with an additional nine pages in the expanded claim chart of Appendix C. Pet. 61; Ex. 1003 ¶¶ 159–167, Appendix C. Our rules expressly prohibit such incorporation by reference. 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). The Federal Circuit has held that “the ‘prohibition against incorporation of arguments from other documents serves various policy goals, including to ‘minimize the chance that an argument may be overlooked’ and to ‘eliminate[ ] abuses that arise from incorporation and combination.’” Parus Holdings, 70 F.4th at 1372 (citing General Access Solutions, Ltd. v. Sprint Spectrum L.P., 811 F. App'x 654, 657 (Fed. Cir. 2020)). We decline to sift through Dr. Forsyth’s declaration in order to find the arguments that may support Petitioner’s challenge.” slip op. at 21

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

    “We agree with Patent Owner that the Petition fails to sufficiently explain how the combination of Loewen and Fujimoto teaches the “control data” in Petitioner’s proposed construction. Neither Petitioner’s claim chart for limitation [1.f] nor the other portions of the Petition identified in Petitioner’s Reply identify what disclosure in Loewen or Fujimoto corresponds to this “control data,” or why this “control data” would be inherent in the disclosures of those references. Additionally, as discussed above, to the extent Petitioner is relying on Dr. Forsyth’s Declaration to provide argument not set forth in the Petition, such reliance would be an improper incorporation by reference. And, in any event, Dr. Forsyth also does not identify with specificity what disclosures of Loewen or Fujimoto correspond to the “control data” in Petitioner’s proposed construction. Finally, Petitioner’s Reply does not explain how Loewen’s disclosure that the computer “triggers” the still cameras to capture images involves “control data,” or why one of ordinary skill would understand that “control data” is necessarily sent as part of this “triggering.” Consequently, we determine that Petitioner has failed to sufficiently show that the combination of Loewen and Fujimoto teaches element [1.f], and thus has failed to establish a reasonable likelihood that claim 1 is unpatentable over this combination. Because Petitioner’s other grounds are all directed to claims that depend from claim 1, Petitioner has failed to sufficiently show unpatentability of those claims as well.” slip op. at 25

  § 103 obviousnesscites KSR
  Patents in suitUS 9,182,657
• Nearmap US, Inc. v. Eagle View TechnologiesInstitution denied
  PTAB · Oct 9, 2024 · IPR2024-00716 · APJ Stacey G White · IPR · Institution

  The Board denied institution because the Petition did not explain with particularity how the cited references taught the challenged claims.

  RulingsInstitution decision

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

    “petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art would have “a bachelor’s degree or higher in computer science, computer engineering, or an equivalent educational background, or at least five years of industry experience in software development. Pet. 17 (citing Ex. 1003 ¶¶ 12–15). Patent Owner does not address the level of ordinary skill in the art in its papers. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

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

    “Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 7

  • BurdenDecided for patent owner

    “We agree with Patent Owner. As the Supreme Court has noted, “the petitioner is master of its complaint.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363 (2018). As such, Petitioner has the responsibility to make plain its challenges to the disputed claims. See 37 C.F.R. § 42.104 (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). The Petition does not make clear Petitioner’s theory of the case. It is not the Board’s responsibility to weave together Petitioner’s evidence into a cohesive case. See 37 C.F.R. § 42.22(a)(2) (stating that Petitioner “must include” a full statement supporting its challenge “including a detailed explanation of the significance of the evidence”); see also Parus Holdings, Inc. v. Google LLC, 70 F.4th 1365, 1371 (Fed. Cir. 2023) (Noting that a party’s burden “cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence.”).” slip op. at 13

  Claim constructioncites Phillips
  Patents in suitUS 10,671,648
• Netflix, Inc. v. Videolabs, Inc.All claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–14 are unpatentable: claims 1–4 and 8–11 as anticipated by Mehta, and claims 1–14 as obvious over Mehta and Schläpfer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9

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

    “We construe only those claim terms that require analysis to resolve the controversy. 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”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner and Patent Owner agree that no claim terms require specific construction to resolve the unpatentability issues presented in the Petition. Pet. 23; PO Resp. 10–11. We agree and do not construe any terms.” slip op. at 9

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

    “Analysis We agree with Petitioner. Mehta discloses storing “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Ex. 1003 ¶ 98. Mr. Wechselberger testifies that this disclosure shows that Mehta’s “MAS receives, stores and supports functionally equivalent programs capable of running on multiple devices because each program corresponds to a different device having different device capabilities (e.g., written using different languages).” Ex. 1002 ¶ 66. This testimony is consistent with that of Dr. Goodrich, who testifies that “each application has a single version made for a particular device type.” Ex. 2020 ¶ 66. Dr. Goodrich later testifies that paragraph 98 of Mehta describes that there could be two functionally equivalent programs with the same name that are compatible with a single user’s computer. Id. at ¶ 88; see PO Resp. 31–32 (citing Ex. 2020 ¶¶ 87–88). We do not credit this later testimony, because it is inconsistent with Dr. Goodrich’s earlier testimony that “each application,” or program of Mehta, is “made for a particular device type.” Ex. 2020 ¶ 66. We agree with Mr. Wechselberger and find that a person of ordinary skill in the art at the time of invention would have understood that Mehta’s disclosure of functionally equivalent programs having the same name that are capable of running on multiple kinds of devices means that each program corresponds to a different device having different capabilities. Further, Mehta discloses that “the MAS only lists those applications that are supported by the subscriber’s device. This allows the subscriber to avoid the problem of having to explicitly select a compatible application.” Ex. 1003 ¶ 117; see Pet. 36–37 (citing Ex. 1002 ¶¶ 75, 77). Mr. Wechselberger testifies that a person of ordinary skill in the art at the time of invention would have understood this disclosure to mean that the MAS provides the subscriber with only a single subscriber-appropriate version that will work for the subscriber. Ex. 1002 ¶ 77. Although Patent Owner contends that Mehta is silent on whether only a single description would be provided if there were multiple implementations (PO Sur-Reply 10–11), we agree with Mr. Wechselberger and find that when multiple implementations have the same name, each implementation corresponds to a different device, and therefore, the MAS would only present to the subscriber the one implementation that works with the subscriber’s device. Ex. 1002 ¶¶ 66, 75, 77.” slip op. at 28

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “piece of content, while the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich, in his deposition, when asked if “one of ordinary skill in the art at the time of the ’790 patent would also understand that Microsoft Word for Windows and Microsoft Word for Mac are also functionally equivalent, correct?” answered “Yes . . . . But they would be even stronger than simply functionally equivalent. They would be different implementations of the same product.” Ex. 1029, 43:14–24. However, later in his deposition, Dr. Goodrich testifies that Microsoft Word for Windows and Microsoft Word for Apple Mac are separate applications, not different implementations of the same application. Ex. 1029, 48:1–20. We disagree with this later testimony. Neither Dr. Goodrich nor Patent Owner persuasively explains why Dr. Goodrich changed his unambiguous position from both his declaration and his earlier deposition testimony. For example, Dr. Goodrich testifies in his deposition that “for the Lion King example, a .MP3 and a .MOV are different implementations of the same product. They’re also functionally equivalent, but functionally equivalent is broader.” Ex. 1029, 45:7–11. Dr. Goodrich continues, “when Mehta is disclosing functionally equivalent, it is not referring to it as different implementations of the same product. Instead, it’s [describing] how to disambiguate [applications] not clustered in terms of implementations . . . based on other metadata.” Id. at 45:14–21. This explanation is unpersuasive because it is inconsistent with Dr. Goodrich’s declaration testimony, in which Dr. Goodrich explicitly testifies that the different versions of Lion King, as well as the different versions of Microsoft Word, are different implementations of the same product. Ex. 2020 ¶ 39. Specifically, in his declaration, Dr. Goodrich testifies that the “various versions of Lion King (such as an .mp3 file or an .mov file) are the implementations of the Lion King. For another example, . . . the versions of Microsoft Word for Windows and Microsoft Word for Apple Macs are different implementations.” Ex. 2020 ¶ 39. Dr. Goodrich testifies again that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Ex. 2020 ¶ 70. Further, the reason given in the explanation in his deposition, that Mehta needs to disambiguate applications that are not clustered in terms of implementations based on other metadata, would also apply to the different versions of Lion King, yet Dr. Goodrich consistently testifies that these different versions are different implementations, both in his declaration and in his deposition. Id.; Ex. 1029, 45:7–10. Petitioner contends, and we agree, that the inconsistent testimony of Dr. Goodrich appears to be an attempt to cure Patent Owner’s and Dr. Goodrich’s incomplete analysis of Mehta’s disclosure. See Reply 7–8. In particular, the Petition quotes Mehta’s disclosure that the MAS stores “functionally equivalent programs having the same name that are capable of running on multiple kinds of devices that even may be written using different languages.” Pet. 28 (quoting Ex. 1003 ¶ 98). Dr. Goodrich addresses this disclosure by explaining that two applications, such as Microsoft Word and Apple Pages, are functionally equivalent but are two different applications, not multiple implementations of a single application. Ex. 2020 ¶ 70. In this analysis, Dr. Goodrich does not address the full disclosure of Mehta, which describes that the “functionally equivalent programs hav[e] the same name” (Ex. 1003 ¶ 98), such as Dr. Goodrich’s example of Microsoft Word for Windows and Microsoft Word for Apple Macs. See id. Thus, although Dr. Goodrich is correct in testifying that some functionally equivalent programs, such as Microsoft Word and Apple Pages, are not different implementations of an item of digital content, he is also correct in testifying that “Microsoft Word for Windows and Microsoft Word for Apple Macs” are “multiple implementations of an individual item of digital content.” Id. Yet Dr. Goodrich does not identify any difference between the multiple implementations of Microsoft Word and the functionally equivalent programs having the same name as described by Mehta.” slip op. at 18

  Patent outcomesUS 7,233,790 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,233,790
• Netflix, Inc. v. VL Collective IP LLCAll claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–24 are unpatentable: claims 1, 2, 4, 7, 8, 10, 13, 14, 16, 19, 20, and 22 are anticipated by Cassin; all claims are also obvious over Cassin and Huston and over Huston.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 7

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

    “We construe only those claim terms that require analysis to resolve the controversy. 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”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. Similarly, Patent Owner contends that “no express construction of any term is required.” PO Resp. 18. For purposes of this decision, we do not construe any claim terms.” slip op. at 8

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

    “is included in the indication. See PO Resp. 40. However, the ’559 patent does not describe what is included in the claimed “listing.” Rather, throughout the disclosure of the ’559 patent, the phrase “the listing of one or more pieces of content stored in memory” or a variation thereof is repeated without any further elaboration. Ex. 1001, 3:13–15, 3:26–36, 12:22–26, 12:50–52, 13:29–30. For example, the Specification does not disclose that the listing of one piece of content includes the title of the piece of content, nor an identification number of the piece of content, nor any other information about the piece of content. The disclosed listing is no more than an item of information that indicates that a specific piece of content is stored in the memory of the terminal. Therefore, the plain and ordinary meaning of the claim term “a listing of one . . . piece[] of content stored in the memory,” read in light of the Specification of the ’559 patent, encompasses an item of information that indicates that a specific piece of content is stored in the memory of the terminal. We agree with Petitioner and find that Cassin’s indication that the client currently has the media content item describes an item of information that indicates that a piece of content is stored in the memory of the terminal. Therefore, Cassin’s indication that the client currently has the media item describes “a listing of one . . . piece[] of content stored in the memory” as claimed.” slip op. at 33

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

    “Analysis We agree with Petitioner and find that Cassin’s offer to download an item describes “a response . . . that instructs the terminal to perform one or more actions” as claimed. Reply 11 (citing Pet. 25–26), 13–14. Cassin discloses that the server uses the user information received from the client to query a database in the server for a list of content to which the user is entitled. Ex. 1004 ¶¶ 162, 164. Cassin discloses that the server offers an item from the list to the client for downloading. Id. ¶ 163 (The server offers every item on the list), ¶ 164 (The server attempts to send an item on the list). Cassin discloses that the client checks to see if it already has the item. Id. ¶¶ 163, 164. If the client has the item, the client refuses the download offer. Id. If the client does not have the item, the client accepts the download of the item and stores the item in its content repository. Id. Thus, the client responds to the offer to download an item from the server by (a) checking to see if it has the offered item, and (b) either refusing the download if the client has the item or accepting the download if the client does not have the item. Therefore, we agree with Petitioner and find that “when the server offers a media item for the client to download, the server is ‘instructing the terminal to perform one or more actions to thereby control the flow of content.’” Reply 11 (citing Pet. 25–26). We agree with Petitioner that in response to the server’s offer, “the client will either ‘refuse the download’ (if it has the content) or ‘accepts the download of the media content item from the server and stores the media content in the local content repository’ (if the client does not have the content).” Id. (citing Ex. 1004 ¶ 163). We agree with Petitioner and find that by checking to see if it has the item, and “by refusing or accepting the download offer, the client is doing ‘something to control the flow of content’ in response to the server’s instruction.” Id. (quoting PO Resp. 23). We disagree with Patent Owner’s contentions to the contrary. In particular, we disagree with Patent Owner’s contention that the server’s offer “has not instructed the client to do anything—the client takes action based on other factors (whether or not it already has the media content item).” PO Sur-Reply 3; see PO Resp. 31–32; Ex. 2002 ¶¶ 91–93. We find that the client performs the actions of checking to see if it already has the item and, depending on whether it has the item, either accepting or refusing the offer, in response to receiving the offer from the server. Ex. 1004 ¶¶ 163, 164; Ex. 1003 ¶¶ 72–75. Thus, we agree with Petitioner that the server’s offer instructs the client to (a) determine whether the client has the item and (b) depending on whether the client has the item, either accept or refuse the offer, which describes “instructing the terminal to perform one or more actions to thereby control the flow of content” as claimed. We further find that, because the offered item is from the server’s list which was determined using information from the user and information from the server’s database, the offer to download the item describes “a response to the content status . . . based upon the terminal status information and the server status information” as recited in claim 1.” slip op. at 26

  Patent outcomesUS 7,440,559 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,440,559
• Cisco Systems, Inc. v. Netsocket, Inc.All claims unpatentable
  PTAB · Sep 13, 2024 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1–5, 7, and 8 as obvious over Xiao, Schelen-1, and Gibson; claims 4–8 as obvious over those references and Schelen-2.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner utilizes Petitioner’s proposed level of skill in the art. PO Resp. 4–5. For purpose of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art, which is also consistent with the level of skill reflected in the Specification of the ’698 patent and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

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

    “Patent Owner states that “the Board would benefit from expressly construing the preamble of Claim 1 as limiting to make clear Claim 1’s bounds in the context of Petitioner’s arguments.” PO Resp. 5. Patent Owner’s main point, as we understand it, is that the preamble’s recitation of “wherein the bandwidth broker (BB) is associated to each network domain” is limiting because subsequent limitations in the claim, and dependent claims 2 and 3, “refer[] to the preamble’s statement that there is a bandwidth broker associated with each of the network domains involved in the path from source to destination networks.” Id. at 6–7. Petitioner responds that “[r]egardless of whether the preamble is limiting, the prior art renders obvious the preamble.” Pet. Reply 7. We agree with Patent Owner that the preamble to the claim is limiting, and treat it as such in this Decision.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “Patent Owner’s arguments are not supported by persuasive evidence. While Xiao indicates that a bandwidth broker “may not be needed in MPLS-based ISP networks,” Xiao does not disparage or discredit its presence in such a network. “[T]he fact that there may be reasons a skilled artisan would prefer one over the other does not amount to a teaching away from the lesser preferred but still workable option.” Bayer Pharma AG v. Watson Labs, Inc., 874 F.3d 1316, 1327 (Fed. Cir. 2017); see also Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into’ the claimed invention does not teach away.” (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)). Here, Patent Owner has not provided evidence that Xiao “criticize[s], discredit[s], or otherwise discourage[s]” the use of a bandwidth broker in an MPLS network. Patent Owner has also not established that a bandwidth broker would be inoperable when used in an MPLS-based network. “[A] reference may teach away from a use when that use would render the result inoperable.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). To the contrary, the evidence of record points to the opposite. First, Xiao’s statement that bandwidth brokers might not be needed in an MPLS network, is also an indication that, on the other hand, they may be included in an MPLS network and therefore would be expected to be operable when combined. Indeed, the ’698 patent discloses that RATES in the MPLS domain performs admission control for a flat link state-domain, a characteristic of a bandwidth broker. Ex. 1001, 4:11–21.” slip op. at 26

  • Strike new argumentNew argument consideredDecided for petitioner

    “We do not agree that this is a new argument. In the Decision, we preliminarily adopted Petitioner’s proposal that Gibson’s admission manager is a bandwidth broker. Institution Dec. 39 (citing Pet. 54 (citing Ex. 1006, 6:14–16; Ex. 1003 ¶¶ 254–255)). The Decision also preliminarily adopted Petitioner’s proposal that Gibson’s administrative server and connection manager correspond to the claimed intra-domain broker. Institution Dec. 39 (citing Pet. 57–58). The Decision to Institute, summarizing Petitioner’s argument, explained that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker), and that the administrative server works with the connection manager to register paths. Decision to Institute 40–41. See Ex. 1003 ¶¶ 274 (“Gibson discloses that the admission manager (‘bandwidth broker’) passes various resource requests to the administrative server and the connection manager (‘at least one intra-domain (1DB)’), which renders obvious ‘passing resource requests from the Bandwidth Broker (BB).’”); 277 (“As shown below at Gibson’s Figure 2, a ‘Request’ for a new LSP is passed from the admission manager (‘bandwidth broker’) to both the administrative server and also to the connection manager (collectively ‘at least one intra-domain (1DB)’).”). The statement by Dr. Houh in his second declaration “that Gibson’s coordination among the admission manager [BB] and the administrative server [IDB] is consistent with the claimed approach to LSP setup” reflects the original argument in the Petition that the admission manager (bandwidth broker) requests label paths from the administrative server (intra-domain broker). Institution Dec. 40–41. The argument has not changed and, in light of the complete record, we come to the same determination that we made in the Decision to Institute. The admission manager was described by Dr. Houh as requesting paths from the administrative server and the server working with the connection manager. Ex. 1003 ¶¶ 274–277. Thus, there is “coordination” between the admission manager, and administrative server” slip op. at 66

  Patent outcomesUS 7,190,698 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,190,698
• Freewheel Media, Inc. v. Intent Iq, LLCInstitution denied
  PTAB · Sep 4, 2024 · IPR2024-00420 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution on claims 1–26, finding no adequate justification for a second parallel petition challenging the same claims.

  RulingsInstitution decision

  • Parallel petitionsInstitution denied discretionary otherDenied

    “Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. . . . In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Practice Guide 59 (emphasis added). The Practice Guide provides examples of “circumstances in which more than one petition may be necessary.” Id. None of these examples are pertinent here. For example, a second petition might be justified “when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Petitioner does not argue that the number of claims in the parallel litigation is “large.” And while Petitioner does argue that the prior art relied upon on might be antedated, Patent Owner responds by stipulating “that it will not attempt to antedate or disqualify the voluminous prior art relied upon by Petitioner.” Prelim. Resp. 7 (internal quotation marks omitted). Petitioner’s remaining arguments are no more persuasive. Responding to Petitioner’s argument that different prior art is involved in the two petitions, Patent Owner points out, “[n]early all parallel petitions involve different proposed prior art.” Prelim. Resp. 6. We agree. Petitioner’s desire to double the available word count is an insufficient justification for a second petition. As our Practice Guide cautions, “[t]wo or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Practice Guide 59. This is especially concerning here, where the instituted trial in IPR2024-00419 will involve nine references and eleven grounds. Adding an additional fifteen grounds and nine references from this Petition to the mix would create an “unnecessary burden.”” slip op. at 10

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

    “In sum, in the words of our Practice Guide, Petitioner fails to show “why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a).” Practice Guide 60. III. CONCLUSION For the foregoing reasons, we are not persuaded that the facts presented by Petitioner justify a second petition challenging the same claims of the ’015 patent as the petition in IPR2024-00419. We therefore exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 11

  Discretionary denial
  Patents in suitUS 11,564,015
• Freewheel Media, Inc. v. Intent Iq, LLCInstituted
  PTAB · Sep 4, 2024 · IPR2024-00419 · APJ Thomas L Giannetti · IPR · Institution

  The Board instituted IPR on claims 1–26 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 14 are obvious over Baig, Banga507, Banga690, and McFarland.

  RulingsInstitution decision

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny petition or due to the alleged lack of particularity in the Petition. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 2

  • Parallel petitionsDenied

    “Consistent with the Board’s practice for handling parallel petitions, Petitioner filed a Petition Ranking (Paper 3, “Notice”). See Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019).2 In the Notice, Petitioner ranks this Petition first among the two petitions challenging the ’015 patent and the petition in IPR2024-00420 second. Notice 1. As is discussed in our separate decision in IPR2024-00420, entered concurrently, we have discretion to deny a parallel petition under 35 U.S.C. § 314(a). In view of Petitioner’s ranking and our assessment of the 1 Those ten additional petitions are the following: IPR2024-00413, IPR2024-00414, IPR2024-00415, IPR2024-00416, IPR2024-00417, IPR2024-00418, IPR2024-00421, IPR2024-00422, IPR2021-00423, and IPR2024-00424. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. issue in our institution decision in IPR2024-00420.” slip op. at 3

  • Other 314aDecided for petitioner

    “violate[s] the ‘particularity requirement of 35 U.S.C. § 312(A)(3).” Prelim. Resp. 8–13. Patent Owner cites the Petition’s eleven grounds based on nine “express” prior art references and 33 other “shadow”9 references and exhibits. Id. at 10–11. Patent Owner asserts that “it is unclear which references Petitioner intends to be (or not to be) part of each of the grounds in its Petition.” Id. at 12. Patent Owner complains about the length of the petition and accompanying declarations. Id. (“The Petition itself is seventynine pages long (13,850 words), and attaches fifty-six exhibits. One of those exhibits is a 349 page declaration from one of Petitioner’s experts.”) (citations omitted). Patent Owner cites the Board’s informative decision in Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 at 24 (PTAB Mar. 6, 2019). We decline to exercise our discretion to deny this Petition for lack of particularity. Patent Owner’s reliance on Adaptics is misplaced. Adaptics is distinguishable from this case. In Adaptics, the petitioner’s use of “and/or” in its challenges yielded “hundreds of possible combinations.” Adaptics, Paper 20 at 19. In addition, the petitioner in Adaptics asserted a “catch-all” ground asserting obviousness as an alternative if its extensive anticipation 8 Available at https://www.uspto.gov/patents/ptab/trials/guidance-impact-sas-aia-trial. 9 Patent Owner explains that these are exhibits “attached to the Petition and expressly cited and relied upon by Petitioner’s experts.” Prelim. Resp. 11. particularity, the Board cited this “catch-all” ground as “the worst offender.” Id. at 18. While we agree that the Petition in this case could have been more concise, we disagree that it is so “voluminous and excessive” as to warrant denial for lack of sufficient particularity. See Adaptics, Paper 20 at 18. slip op. at 24

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

    “institution, Petitioner establishes sufficiently that the combination of Baig, Banga507, Banga690, and McFarland teaches or suggests each of the limitations recited in independent claim 1, and that it would have been obvious to combine the teachings of those references. See Pet. 9–38. Petitioner asserts that “[a person of ordinary skill] would have been motivated and would have found it obvious to incorporate these teachings of Banga507, Banga690, and McFarland in Baig’s system to select targeted advertisements for groups of users demonstrating a pattern of accessing the Internet from a shared AP (e.g., at a coffee shop every Sunday) based on the group members’ collective preferences because doing so would have allowed Baig’s modified system to advantageously improve the relevance of the targeted advertisements provided to the group members.” Id. at 12 (citing Ex. 1007 ¶ 39; Ex. 1015 ¶ 54; Lett Decl. ¶¶ 142–146). Petitioner presents an element-by element analysis supported by expert testimony. Id. at 15–30; Lett Decl. ¶¶ 151–237. At this stage, Patent Owner does not address the merits of Petitioner’s challenge.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,564,015
• 3shape A/S / 3shape Inc. v. Dental Imaging Technologies CorporationInstitution denied
  PTAB · Aug 19, 2024 · IPR2024-00549 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted combinations.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–20 of the ’798 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby do not institute an inter partes review as to these claims of the ’798 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’798 patent would have at least (1) a bachelor’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) and two to three years of work experience in 3D imaging and modeling of physical structures, or (2) a master’s degree in electrical engineering, computer engineering, or computer science (or equivalent course work) with a focus in 3D imaging and modeling of physical structures. 4 U.S. Patent Application Publication No. 2012/0062701 A1, published Mar. 15, 2012 (Ex. 1010) (“Dillon”). 5 A. Johnson, “Spin-images: A Representation for 3-D Surface Matching,” Ph.D. Dissertation, The Robotics Institute, Carnegie Mellon University, August 1997 (Ex. 1011) (“Johnson”). Pet. 7–8 (emphasis added). Patent Owner counters that a POSITA at the time of the invention of the ’798 patent would have had a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, Physics, or an equivalent field, as well as at least two years of work experience, or alternatively, at least five years of comparable industry experience in the field of imaging and/or image scanning including 3D imaging systems and 3D modeling techniques. Additional education reduces the threshold for years of experience in the field, and vice versa. Prelim. Resp. 5 For purposes of this Decision, the level of ordinary skill in the art is” slip op. at 10

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

    “Petitioner notes there are proposed constructions of terms in the related litigation, including constructions for “‘contiguous scan’” and “‘occlusal surface.’” Pet. 8–9. Here, Petitioner further contends that the term “‘occlusal surface’” means “‘the biting surface of a patient’s teeth’” and that “‘contiguous scan’” means “‘a scan of an/the occlusal surface made in a single, uninterrupted motion of the scanning wand.’” Id. at 8. Nonetheless, Petitioner contends also that “resolution of this Petition does not depend on which constructions are used because these features of the claims are disclosed by the prior art regardless of the construction.” Id. at 9. Patent Owner disagrees that no claim terms need construction. Prelim. Resp. 6. According to Patent Owner, “3Shape has not adequately addressed how numerous elements of the challenged claims are disclosed or suggested by the prior art under 3Shape’s proposed construction of the phrase ‘contiguous scan of an occlusal surface.’” Id. Based on our review of the parties’ arguments and evidence, no construction is necessary to resolve the parties’ disputes. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12

  • BurdenNot shown unpatentable

    “As described, we understand Babayoff to teach that data entities IS′1, IS′2, . . . IS′n are stitched together after identifying and removing soft tissue data from the unstitched data sub-entities. Our understanding of Babayoff is consistent with Figure 15, where Babayoff teaches that the entities IS1, IS2, . . . ISn) are provided in step 1210 “to be stitched,” but are not stitched until step 1240. Ex. 1008, Fig. 15. Babayoff further discloses that the images are stitched together after soft tissue identification and/or removal: [i]n the next step 1230 of the method, the modified entities (IS'1, IS'2, ... IS'n) are then manipulated in a similar manner in which the original entities (I1, I2, ... In.) are manipulated in the prior art, mutatis mutandis, to register and then stitch the various modified entities (IS'1, IS'2, ... IS'n) together to provide a composite entity I’ that comprises the data points corresponding at least to the hard tissues. Id. at 24:41–47 (emphases added). As such, in Babayoff, the soft tissue is removed prior to stitching and generating the composite entity I’. Babayoff further teaches that “[b]y eliminating the data associated with the soft tissues, and proceeding with stitching only the hard tissues using the color data, the quality of the stitching procedure is significantly better than when using the full intra-oral data for the stitching procedure.” Id. at 5:12–16 (emphases added). Given at least this disclosure, we agree with Patent Owner that Petitioner has not sufficiently explained how Zhang combined with Babayoff discloses claim limitations [1.3], [1.9], [1.10], and [1.11]. More specifically, Petitioner relies upon Babayoff to disclose the removal of soft tissue data from the generated contiguous scan, but does not explain how Babayoff teaches this removal from the contiguous scan that has been generated by stitching images together prior to soft tissue data removal.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,234,798

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.