• Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Aug 26, 2025 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1, 32, 38, 39, 47, 52, and 54 are unpatentable as obvious over Richardson and Zhao and over Yu and Paparrizos.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶ 39–42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 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 ’023 patent and the prior art.” slip op. at 11

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

    “Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner “does not propose any terms need to be construed.” PO Resp. 18. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. 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 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet 45–46 (citing Ex. 1003 ¶¶ 88– 89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged. or otherwise unavailable. Id. at 45 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418. We acknowledge, but are not convinced by, Patent Owner’s arguments that the nature of Richardson requires the ability to charge a high capacity battery and rapid recharging and therefore would not have led a person of ordinary skill in the art to include Zhao’s USB charging circuit in Richardson. See PO Resp. 25–31. In particular, we are not persuaded that Richardson is limited to high capacity, rapid recharging of batteries as Patent Owner suggests. Instead, Richardson broadly describes “an apparatus and method for temporarily delivering supplemental power to the electrical system of a vehicle” (Ex. 1005 ¶ 6) where “[t]he jump starter 10 may be configured for 12, 18, 24, 30, 36, 42 or 48 volts” (id. ¶ 34). According to Richardson, this may be achieved by using “two or more batteries of the same or different voltage levels . . . to achieve the voltage requirements of the vehicle to be started.” Id. By way of example, Richardson states that “if the batteries 23 are both 12-volt batteries, the system may be configured for 12- or 24-volt operation” and “[i]f the batteries 23 are 12-volt batteries and a battery 25 is a 6-volt battery, 18- or 30-volt configurations may be provided.” Id. Neither Richardson’s claims nor its specification require any particular charging capacity or charging time. See generally Ex. 1005. While a single, near-final paragraph of Richardson introduces the concept of rapid charging of the jump starter batteries to charge a fleet of vehicles, Richardson characterization is permissive or optional. For example, Richardson states The charging system of the vehicle may be used to charge the capacitors 21 and jump starter batteries 22. . . . This allows the capacitors 21 and jump starter batteries 22 to be fully recharged in about 1 to 5 minutes and can therefore start many vehicles in a row without becoming discharged. Id. ¶ 55 (emphasis added). We do not view this singular occurrence as supplanting the breadth of Richardson’s complete disclosure. Furthermore, the crux of Patent Owner’s argument is that because of Richardson’s goal of charging high capacity batteries a USB charger would require significant charging time. PO Resp. 29; Sur-reply 2–14 But, nowhere does Patent Owner allege that a USB charger would not work given sufficient time.11 See generally PO Resp. and Sur-reply. And, when faced with no alternative, the person of ordinary skill in the art must balance the trade-offs and consider charging slowly, or not at all. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner 11 Petitioner in its Reply presents some evidence of charging times using a USB input charger. Pet. Reply 4–7; Ex. 1044 ¶¶ 6–12, Appendix A. Patent Owner disputes the accuracy of Petitioner’s calculations. Sur-reply 2–11. But, whether Petitioner’s calculations are accurate or not, Petitioner’s proposed alternative modification does not remove the faster charging path and instead adds the convenience and flexibility of a secondary charging method where the primary and faster charging path is unavailable. Ex. 1044 ¶ 12.” slip op. at 21

  Patent outcomesUS 11,447,023 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,447,023
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Aug 11, 2025 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 11, 12, and 15–21 are unpatentable as anticipated by Rogers and obvious over Rogers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ proposed levels of ordinary skill appear to be substantially the same, are both supported by testimonial evidence, and appear to be consistent with the asserted prior art and the types of problems and solutions addressed in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. Although Patent Owner’s proposed level is more specific about the nature of the practical or industry experience, neither party has argued that the differences between the parties’ proposed levels of ordinary skill would affect the outcome. We adopt Petitioner’s proposed level of ordinary skill for this decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “inside” it, the evidence does not support Patent Owner’s position. First, the plain language of independent claim 1 states that the proxy object “compris[es]” the one or more haptic output devices. Ex. 1001, 10:42–43. This is broader than the “within” language of the non-entered amendment. See Ex. 1002, 258. Not only does the evidence fail to show clear disclaimer (see United States v. Telectronics, Inc., 857 F.2d 778, 782–83 (Fed. Cir. 1988)), the adoption of broader “comprising” language shows an intent for the claims not to be limited to systems in which the proxy object contains haptic output devices “inside” it. We also do not agree with Patent Owner that the applicant’s attempts during prosecution to distinguish Gonzales are a clear disclaimer of claim scope. The applicant argued that Gonzales’s AR glove, which contained haptic output actuators in it (see, e.g., Ex. 1008 ¶¶ 80–82, Fig. 3B), was not a “proxy object” as recited in the claims because “the virtual objects and/or visible alterations to the vehicle [the user is sitting in while wearing the 6 Once again, Patent Owner mistakenly references Exhibit 2001. glove] are not overlaid on the AR glove . . . [a]nd the physical portions of the vehicle were visible alterations are overlaid do not include any feedback devices.” Ex. 1002, 287. Thus, the issue raised during prosecution was not whether the AR glove comprised haptic output devices—which it clearly did even under Patent Owner’s proposed construction—but whether the AR glove had modified visual effects displayed on it as per limitation 1D3. slip op. at 11

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

    “For the above reasons, we decline to adopt Patent Owner’s proposed construction of “a proxy object comprising one or more haptic output devices” as meaning “a physical object that acts as a proxy for a virtual object and that itself contains inside a haptic output device, e.g., an actuator.” PO Resp. 10. Instead, we conclude that no explicit construction is necessary beyond the ordinary and customary meaning.” slip op. at 12

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

    “Alternatively, we find persuasive Petitioner’s argument that a person of ordinary skill in the art would have had used both the camera data and the inertial sensor data in determining the “reloading” haptic effect. Pet. 77; Pet. Reply 19–22; Ex. 1003 ¶ 318; Tr. 31:3–10. This is evident in light of Rogers’s disclosures (1) that both sets of data are used to determine the pointing direction of interface object 104 in at least some contexts (Ex. 1010 ¶ 106); and (2) that the “reloading” haptic effect is based on the pointing direction (Ex. 1010 ¶ 105). See Intel Corp., v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[If] there’s a known technique to address a known problem using prior art elements according to their established functions, then there is a motivation to combine.” (internal quotation omitted)). Thus, Petitioner has shown by a preponderance of the evidence that Rogers discloses limitation 1D2, and alternatively that limitation 1D2 would have been obvious based on Rogers’s disclosures.” slip op. at 28

  Patent outcomesUS 10,665,067 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,665,067
• Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co., Ltd.All claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00509 · APJ Michael J Strauss · IPR · Final written decision

  Claims 1–4 and 6–19 are unpatentable as obvious over Throughtek-2012 and the Lorex Video; claims 1–3, 6, 10, 12–14, 17, and 18 are also unpatentable under two other grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the testimony of Dr. Bims, Petitioner proposes that a person of ordinary skill in the art at the time of the ’842 patent would have been a person having a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies. Pet. 11 (citing Ex. 1001 ¶¶ 15–16). Patent Owner does not provide any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner as it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7

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

    “Petitioner asserts “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 11 (citing Ex. 1001 ¶ 55; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. §42.100). Patent Owner presents no proposed claim constructions. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)).” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “In addition, “[n]egative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). A reason to exclude an element may be found in “statements in the specification expressly listing the disadvantages of using” that element. Santarus, 694 F.3d at 1351. Another reason to exclude may be when the specification “distinguishes among” the element and alternatives to it. Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1357 (Fed. Cir. 2015). As the Federal Circuit explained, “[t]he common denominator of these examples [(i.e., the reasons to exclude an element)] is disclosure of the element.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). More particularly, “[s]ilence is generally not disclosure.” Novartis, 38 F.4th at 1017; see also Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021). Accordingly, “the written description requirement cannot be met through simple disregard of the presence or absence of a limitation.” Novartis, 38 F.4th at 1017. Our reviewing court further notes that “it is possible that the written description requirement may be satisfied when a skilled artisan would understand the specification as inherently disclosing the negative limitation.” Novartis, 38 F.4th at 1017 (emphasis added, footnote omitted). Thus, “it is a question whether the application necessarily discloses that particular device . . . A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)) (emphasis added).” slip op. at 20

  Patent outcomesUS RE47,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
• Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-01398 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18

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

    “would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 13–25. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Giobbi ’157, Giobbi ’139, and Dua as proffered in the Petition.” slip op. at 46

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45

  Patent outcomesUS 8,646,042 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,646,042
• Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00573 · APJ Thu A Dang · IPR · Final written decision

  Claims 1, 5, 6, 8–11, 13, and 14 are unpatentable as obvious over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Here, as Petitioner points out, “the Challenged Claims . . . do not recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function, amounts to pure functional claiming” (PO Sur-reply 5), the question here is whether “means for” analysis under § 112(f) applies at all. That is, as Patent Owner acknowledges, we must determine first whether the claim is even claiming a “means for” performing a function, “and then” determine whether the structure designed to perform that function is a general purpose computer. Id. As set forth in MPEP § 2181, the three-step analysis in determining whether § 112(f) applies begins with determining whether a claim limitation uses 1) the term “means” or “step” or 2) a nonce term used as a substitute for “means” that is a generic placeholder. See MPEP § 2181(I). We agree with Petitioner’s contentions during oral argument that Patent Owner’s arguments appear to be “based on adding a third general purpose computer structure category that triggers MPF treatment not supported by any case law.” Tr. 32:10–12. Accordingly, although Patent Owner argues that “claim 1 invokes § 112[(f)]” (PO Resp. 8, 18), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the algorithm defining “local, secured information” (id. at 10–20 (citing Ex. 2016 ¶¶ 18, 38–51, 53–55)) and “algorithm of control logic 250” (id. at 21–25 (citing Ex. 2016 ¶¶ 37, 58)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 18

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

    “vi. Combining Giobbi ’157, Giobbi ’139, and Dua Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 13–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 21–22. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23–24.” slip op. at 46

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Owner’s arguments that claim 1 invokes 35 U.S.C. § 112(f), with which, as discussed above, we do not agree. In particular, although Patent Owner argues that Giobbi ’157 does not teach or describe unlocking information from a service block in exchange for an access key “as required in the challenged claims” (PO Resp. 30), and thus fails to disclose the “enabling” function as required by the claim, claim 1 merely requires that one or more of the integrated RDC and integrated PDK enables one or more of an application, a function, and a service. In Giobbi ’157, when the PDK enters a proximity zone of the RDC, the RDC requests profile data stored within the PDK for authentication, and if the profile data received from the PDK is valid, the RDC “completes the transaction.” See Ex. 1005 ¶¶ 59–63. We find availing Petitioner’s reliance of Giobbi ’157’s completion of a transaction by the PDK and the RDC to gain access as teaching “enabling access to secure physical or digital assets,” i.e., “enabling one or more of an application, a function, and service” by at least one of a PDK and RDC. See Pet. 37. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 45

  Patent outcomesUS 8,646,042 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,646,042
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Jul 31, 2025 · IPR2024-00508 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–18, 21–24, and 26–29 are unpatentable as anticipated by Rosenberg; the Board did not reach the alternative Brock grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction.” Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of ordinary skill for this Decision.” slip op. at 5

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

    “Petitioner argues that we need not construe any claim terms explicitly because “the Petition’s prior art discloses each element of the challenged claims under any plausible construction.” Pet. 8. We agree with Petitioner that, for this Decision, we do not need to construe any of the terms explicitly. 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))). To the extent that we discuss specific claim language, we do so below in the context of the prior art. See, e.g., infra Section III.C.2(e).” slip op. at 6

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

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 6

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “A claim is unpatentable for obviousness under § 103(a) if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.4 See Graham, 383 U.S. at 17–18.” slip op. at 7

  Patent outcomesUS 9,116,546 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,116,546
• Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.Instituted
  PTAB · Jul 29, 2025 · IPR2025-00491 · APJ Frederick C Laney · IPR · Institution

  The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that claims 1, 9, and 15 are unpatentable over Ground 1.

  RulingsInstitution decision

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

    “Having considered the arguments and evidence presented by both parties at this stage of the proceeding, we are persuaded that there is a reasonable likelihood Petitioners would prevail in showing that Beel discloses or suggests to a skilled artisan a base unit having a transmitter and a first peripheral device having a receiver and at least one fixed or a configurable endpoint, where the at least one fixed or a configurable endpoint is a data source or a data sink which is able to store or emit data, of the functional device exposed or made available on the first peripheral device.” slip op. at 26

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioners contend that a person having ordinary skill in the art would have had “Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field. Additional educational experience could substitute for some of the work experience.” Pet. 9–10 (citing Ex. 1002 ¶¶ 36–37). Patent Owner does not dispute this position at this time. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioners’ proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’972 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “We do not agree with Patent Owner that “fixed” or “configurable” requires more than what is agreed to by the parties––i.e., the characteristics and operational parameters of the endpoint are either set prior to operation or can be set during operation. We disagree that the ’972 patent defines “fixed or a configurable endpoint” as “a number of descriptive fields of the endpoint.” Rather column 8, lines 5–6, of the ’972 patent states that “[a]n endpoint is defined by a number of descriptive fields,” which speaks more about the mechanism used to establish the characteristics and operational parameters of the endpoint than it does about how “fixed” or “configurable” would be understood by a skilled artisan. And the fact that an endpoint may be defined by descriptive fields does not inform a skilled artisan that “fixed” or “configurable” requires the endpoint to allow the processing device to correctly interpret and utilize the data from the endpoint. Correctly interpreting and utilizing data may be the goal, but that goal is not turned into a requirement of the claims because the recited endpoint is fixed or configurable. Similarly, there is no basis for making that goal a requirement simply because a fixed endpoint is described as providing basic functionality and a configurable endpoint is described as being configurable by the base unit either while pairing or via the processing device. As a result, we find little merit in Patent Owner’s contention that the language “fixed or a configurable” requires a process for setting up the characteristics and operational parameters of an endpoint within a device so that the processing device can correctly interpret and utilize the data of this endpoint. Patent Owner, however, will have an opportunity during trial to further develop this contention.” slip op. at 11

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

    “Having considered the arguments and evidence presented by both parties at this stage of the proceeding, we are persuaded that there is a reasonable likelihood Petitioners would prevail in showing that Beel discloses or suggests to a skilled artisan a base unit having a transmitter and a first peripheral device having a receiver and at least one fixed or a configurable endpoint, where the at least one fixed or a configurable endpoint is a data source or a data sink which is able to store or emit data, of the functional device exposed or made available on the first peripheral device. Petitioners’ offers evidence, supported by its expert declarant, that the endpoints disclosed in Beel are either fixed, such as a mass storage unit with predefined characteristics, or configurable, such as a virtual audio interface that may change configuration based on driver instructions or use context. Pet. 32–33. As Petitioners point out, the ’972 patent itself acknowledges that Beel’s Figure 11 illustrates a system comprising a combination of vendor-specific and standard endpoints, and further interprets these endpoints to correspond to drivers and host applications used for functionality like screen sharing and audio streaming, which demonstrates a direct conceptual and structural alignment between the ’972 patent and Beel. Id. Furthermore, Petitioner’s evidence demonstrates sufficiently that Beel describes a peripheral device acting as a virtual composite device capable of emulating different functions—such as a USB audio speaker—while rerouting the data stream (e.g., RTP audio stream) over the network. Id. For instance, Petitioners’ evidence demonstrates sufficiently Beel discloses or suggests that audio data can be captured by a virtual sound card interface implemented within the peripheral device, re-encoded, and transmitted to the base unit for playback or synchronization with video content. Id. In addition, Petitioners have demonstrated sufficiently that Beel’s architecture supports the requirement that the endpoint of the functional device—whether it is a camera, microphone, or speaker—is made available through or exposed on the peripheral device. Id. The functional device’s capabilities are effectively rendered accessible to the processing device by way of the peripheral device, which acts as an intermediary. Id. Petitioners’ evidence demonstrates sufficiently that this exposure can occur via logical interfaces, such as USB Audio Class (UAC) virtual drivers, that allow the processing device to recognize and interact with these endpoints using standard protocols. Id. Furthermore, Petitioners show sufficiently Beel discloses that the peripheral device may include software that facilitates communication with and presentation of media content on the processing device, further demonstrating that the endpoints are not only present but also actively used for data transmission. Id. Patent Owner’s arguments, at least at this stage of the proceeding, fail to undermine Petitioners’ showing because they are largely just that–– attorney arguments––without sufficient evidentiary backing and because they lack sufficient clarity regarding how the recited claim language distinguishes Beel’s disclosed system. First, Patent Owner makes several representations that Petitioners misplace its reliance on certain teachings or suggests found in Beel and that Beel does not support the contention Petitioners make, but Petitioners’ positions are backed the testimony of Dr. Almeroth and Patent Owner offers no contradictory evidence for why a skilled artisan would understand Beel differently. And, suffice it to say that, when the declaration of Dr. Almeroth is considered in juxtaposition with the cited evidence from Beel, we have found declarant Dr. Almeroth sufficiently persuasive to demonstrate Petitioner is reasonably likely to prevail on the point. For example, Patent Owner simply argues that “there is no indication in Beel of using any fixed or a configurable endpoint of the functional device exposed or made available on the first peripheral device” (Prelim. Resp. 31), but declarant Dr. Almeroth states that “Beel discloses that a peripheral device can act as a ‘virtual audio device’ using a USB Audio Class (UAC) interface,” which “indicates that endpoints of the functional device are ‘exposed or made available on the first peripheral device’” (Ex. 1002 ¶ 130 (emphasis added); see also id. ¶¶ 128–129). Patent Owner’s argument, without any evidentiary support, does little to undermine the opinion testimony from Dr. Almeroth about what Beel’s teachings would indicate to a skilled artisan. Second, although Patent Owner repeatedly states that Beel fails to” slip op. at 26

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,684,972
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Jul 28, 2025 · IPR2024-00556 · APJ Michael R Zecher · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Astala and Shahoian; claims 1, 6–9, 13, 14, and 18 also over Keely and Kolmykov-Zotov; claims 2–5, 10–12, and 15–17 also over those references with Shahoian.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “As we explained in the Institution Decision, we have reviewed the Board’s prior decision in IPR2016-01777 and we disagree with Valve that the previous Board panel actually construed the “determining a press” limitation. See Dec. on Inst. 9–10. The previous Board panel was merely making the point that the three conditions in the “determining a press” limitation had to be related in some way, and pointed to Figure 3 of the ’507 patent as an example of that relationship. IPR2016-01777, Paper 7 at 14–15 (Ex. 1023) (explaining that the interval in Figure 3 is “an integral part of the ‘determining a press imitation’”). The prior Board decision in IPR2016-01777 did not contain a claim construction because, in its Decision on Rehearing, the previous Board panel stated that it “did not expressly construe the ‘determining a press limitation’ or interpret[] the limitation to require the first two conditions recited in the limitation to be maintained for the duration of the first interval.” Apple Inc. v. Immersion Corp., IPR2016- 01777, Paper 9 at 3 (PTAB Apr. 27, 2017) (Decision Denying Petitioner’s Request for Rehearing). Thus, the prior Board decision outcome was not reliant on any particular claim interpretation or characterization of Figure 3; instead, it faulted the petitioner in that case for not considering the three conditions as a whole in the manner required by the claims. Id. at 3–4 (explaining that the petitioner needed to show the “‘first interval has elapsed’ condition as a part of the ‘determining a press limitation’” (emphasis added)). Notwithstanding, and for the sake of clarity, to the extent the prior Board decision in IPR2016-01777 characterized Figure 3 of the ’507 patent to require the pressure and change in pressure conditions to be met during the entire interval, we agree with Valve that such a reading of Figure 3 is incorrect. As Valve points out in its analysis, with which we agree, the flowchart in Figure 3 allows for both the pressure and change in pressure conditions to be met during some but not all of the entire time interval in certain circumstances. Pet. 12–14.3 In summary, we agree with Valve that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already requires—namely, that “determining a press” is defined as the satisfaction of the three conditions. Nothing more is required. Thus, we do not see the need to construe independent claim 1 beyond its plain language.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the testimony of Mr. Ward, Valve argues the following: [a] person of ordinary skill in the art . . . on November 26, 2003 would have had a Bachelors’ degree in computer science, electrical engineering, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies. Pet. 7 (citing Ex. 1003 ¶¶ 47–51). Accordingly, we maintain our preliminary determination regarding the level of ordinary skill in the art. See Dec. on Inst. 8. That is, we adopt Valve’s proposed assessment of the level of ordinary skill in the art because (1) it is consistent with the ’507 patent and the asserted prior art; and (2) it is supported by the testimony of Mr. Ward. We apply this assessment of the level of ordinary skill in the art in our obviousness evaluations below.” slip op. at 12

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

    “Turning to rationale to combine, Valve contends that, because Shahoian recognizes that “[o]ne problem with existing touchpads is that there is no haptic feedback provided to the user” to “assist and inform the user” when interpreting gestures, a person of ordinary skill in the art would have recognized that Astala’s input touch screen 70 was ready for the improvement that Shahoian provides—namely, “haptic feedback associated with touchpad/touchscreen input gestures.” Pet. 17–18 (quoting Ex. 1006 ¶ 6) (citing Ex. 1003 ¶¶ 158–160). Valve argues that a person of ordinary skill in the art would have recognized that incorporating Shahoian’s haptic feedback into Astala’s input touch screen 70 would have introduced certain benefits taught by Shahoian, including, but not limited to, using haptic feedback to inform users of touchpad gestures by “assist[ing] users in noisy environments . . . where sound may not be easily heard by the user.” Id. at 18 (quoting Ex. 1006 ¶ 178) (citing Ex. 1006 ¶¶ 6, 187, 188, 193; Ex. 1003 ¶ 161). Valve also argues that a person of ordinary skill in the art would have been motivated to use Shahoian’s pressure-sensing components in Astala’s input touch screen 70 because, among other reasons, using actual pressure sensors in a touchpad would have provided more accurate determinations of user input. Id. at 19 (citing Ex. 1006 ¶ 41; Ex. 1003 ¶¶ 164–166). Valve asserts there was a reasonable expectation of success in making the proposed combination because it involves “us[ing] Shahoian’s haptic feedback and pressure sensors for their intended use.” Pet. 19–20 (citing Ex. 1003 ¶¶ 180, 181). In addition, Valve asserts that a person of ordinary skill in the art would have reasonably expected Shahoian’s haptic feedback and pressure sensors to succeed in Astala because “Shahoian demonstrates that algorithms for haptic feedback were known and predictable.” Id. at 20 (citing Ex. 1003 ¶ 182). In summary, upon reviewing Valve’s unrebutted arguments and evidence explaining how the combined teachings of Astala and Shahoian account for all the limitations of independent claims 1, 9, and 14, we agree with and adopt Valve’s analysis. See Pet. 17–31, 38–41. Accordingly, Valve has demonstrated by a preponderance of the evidence that the subject matter of these independent claims would have been obvious over the combined teachings of Astala and Shahoian.” slip op. at 19

  Patent outcomesUS 8,749,507 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,749,507
• Microsoft Corporation v. Proxense, LLCAll claims unpatentable
  PTAB · Jul 17, 2025 · IPR2024-00407 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other three grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function[] and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral arguments, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22– 18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 9, 22), and then provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 9–19 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 19–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16

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

    “would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references.” slip op. at 39

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, RDC . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 38

  Patent outcomesUS 9,679,289 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,679,289
• Microsoft Corporation v. Proxense, LLCAll claims unpatentable
  PTAB · Jul 17, 2025 · IPR2024-00405 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–20 are unpatentable under § 103 over Giobbi ’157, Giobbi ’139, and Dua; the Board did not reach the other instituted grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “recite ‘means for’ or ‘step for.’” Pet. Reply 1. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112(f). See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112(f) is not overcome. Although Patent Owner argues that “to claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming” (PO Sur-reply 3 (emphasis omitted)), the question here is whether “means for” analysis under 112(f) applies at all. As Petitioner explained during oral argument, the parties agree that “the law has been consistent and clear” that “the proper framework for an MPF [means-plus-function] construction analysis consists of two steps,” with the first being “determin[ing] whether the limitation is or is not an MPF limitation,” and “[o]nly if the limitation is determined or deemed to be an MPF limitation . . . do you then proceed to step 2 . . . where you analyze the specification of the patent to identify structure corresponding to the MPF limitation.” Tr. 17:22–18:5. That is, as Petitioner pointed out, “all of the case law identified by [Patent Owner] limits this general purpose computer analysis to the second step of the MPF analysis.” Id. at 19:5–7. Thus, although Patent Owner argues that “[s]ince claim 1 invokes § 112[(f)]” (PO Resp. 8, 21), and provides extensive arguments with supporting testimony from Dr. Jakobsson as to the “algorithm defining ‘local, secured information’” (id. at 8–20 (citing Ex. 2014 ¶¶ 18, 36–37, 40–54)) and “algorithm of control logic 250” (id. at 20–22 (citing Ex. 2014 ¶¶ 55–57)), the presumption that each of the terms is not subject to § 112(f) is not overcome; thus, we decline Patent Owner’s invitation to proceed to determining the corresponding algorithm.” slip op. at 16

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

    “Petitioner further provides detailed explanations as to why a POSITA would have found it obvious to combine the teachings of Giobbi ’157 and Giobbi ’139 (Pet. 12–22), and furthermore combine the teachings of Dua to the teachings of Giobbi ’157 and Giobbi ’139 (id. at 23–25), citing Dr. Traynor’s testimony for support. In particular, Petitioner contends that a POSITA would have been motivated to integrate a PDK and RDC into a hybrid device by recognizing that Giobbi-157 and Giobbi-139 are “directed to similar operations,” “describe similar structures for performing those operations,” and have techniques that “are compatible with each other,” wherein combining the techniques “would have worked in the same manner already described in the references.” Id. at 20–21. Petitioner then contends that “Dua further corroborates the teachings of the Giobbi references and provides implementation details for integrating an RDC and PDK into the same device,” wherein “a POSITA would have been motivated to combine the teachings of the Giobbi references and Dua” because, at least “these references are all in the same field of endeavor.” Id. at 23. Patent Owner does not address separately Petitioner’s explanations and supporting evidence regarding the remaining limitations in claim 1, or regarding the proffered reasoning to combine the references. See generally PO Resp. We have reviewed Petitioner’s explanations and supporting evidence regarding these limitations, as well as Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Pet. 26–27, 29–33. Because Patent Owner does not separately address these limitations or Petitioner’s proffered reasoning for combining the references, the Petitioner’s positions regarding these limitations of independent claim 1 and the combination of references stand unopposed as a part of this trial. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining limitations of claim 1, and that a person of ordinary skill in the art would have combined these references. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the proposed combination of Giobbi ’157, Giobbi ’139, and Dua.” slip op. at 39

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,”’ i.e., “enables one or more of an application, a function, and service.” See Pet. 34. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Giobbi ’157, Giobbi ’139, and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1. iv. Remaining limitations of claim 1 Petitioner provides detailed explanations as to how the combination of Giobbi ’157, Giobbi ’139, and Dua teaches the remaining claim limitations as recited in independent claim 1, citing Dr. Traynor’s testimony for support. Pet. 26–27, 29–33 (citing Ex. 1005 ¶¶ 12, 26–44, 50, Fig. 3; Ex. 1006 ¶¶ 22– 44, 88–89; Ex. 1007, 6:46–65, 12:36–45, 12:51–64, 13:9–18, 13:49–60, 14:53–64, 15:42–46, 16:31–34, Figs. 1, 4A, 5–6; Ex. 1003 ¶¶ 56–64). For example, Petitioner contends that Giobbi ’139 “discloses that RDCs operate on battery power (such that the device including an RDC contains ‘a battery’.)” Id. at 26 (citing Ex. 1006 ¶ 89). In addition, Petitioner contends that “Dua discloses that its devices include an ‘internal battery 103.’” Id. at 27 (citing Ex. 1007 12:36–45, 13:49–60, Figs. 1, 5–6; Ex. 1003 ¶ 58). Petitioner also contends that Giobbi ’157’s RDC receives data from the PDK, and discloses “[t]he Reader 108 wirelessly communicates with the PDK 102 when the PDK 102 is within a proximity zone of the Reader 108.” Id. at 29–30 (citing Ex. 1005 ¶¶ 26–44, 50). Petitioner further contends that “Dua’s Reader Unit 304 is another example of an ‘integrated, wireless communication interface’ as “Reader Unit 304 also ‘communicat[es] wirelessly with at least one external device within a proximity zone’ and is ‘communicatively coupled to [an] integrated, secure memory’ (the RFID Tag Unit 306).” Id. at 31–32 (citing Ex. 1007, 6:46–65, 12:51–64, 13:9–18, 14:53–64, 15:42–56, 16:31–34, Figs. 4A, 6; Ex. 1003 ¶ 63) (alteration in original). Petitioner further provides detailed explanations as to why a POSITA” slip op. at 38

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Because the determination of whether the claims invoke § 112(f) comes down to “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure” (Williamson, 792 F.3d at 1348), we find Dr. Traynor’s testimony that claim 1 recites sufficiently definite structure persuasive. Ex. 1032. As the Federal Circuit advised in Williamson, declarations and/or testimony of expert witnesses can play a large role in this determination. Williamson, 792 F.3d at 1348. Similarly, in Dyfan, the Federal Circuit found the district court ignored key evidence – unrebutted deposition testimony regarding how a POSITA would have understood claim terms at issue. Dyfan, 28 F.4th at 1367. In particular, the Federal Circuit in Dyfan found to be “key evidence” the expert’s explanation that the terms, themselves, connote structure, wherein, in combination with the recitation of the code or application’s operation would have connoted structure to a POSITA. Id. In this proceeding, we find persuasive Dr. Traynor’s testimony that a POSITA would have understood the terms “local, secured information stored by the integrated, secure memory,” and “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone,” to have “sufficient definite structure, such that a § 112, ¶ 6 interpretation is improper.” Ex. 1032 ¶ 4. In particular, we find persuasive Dr. Traynor’s testimony that the term “memory” alone has definite structure, and, for example, “is defined as the ‘capacity of a computer or integrated computer system for short and medium-term retention of digital data’ and speaks to a broad class of structures used to retain data for various purposes.” Id. at 5 (citing Ex. 1020, 5). According to Dr. Traynor, “not only does memory connote structure, but a POSITA would have recognized that memory can participate in ‘enabl[ing] one or more of an application, a function, and a service’ by simply storing information . . . necessary to access or otherwise invoke that application.” Id. at 6 (first alteration in original). Dr. Traynor’s testimony is consistent with the Specification of the ’960 patent, which describes a microchip that stores information in memory and responds through an antenna when probed. See Ex. 1001, 2:3–29. Similarly, we also find persuasive Dr. Traynor’s testimony that a “wireless communication interface communicating wirelessly with the at least one external device within the proximity zone” also has sufficiently definite structure for performing the function of “enabling one or more of an application, a function and a service.” Ex. 1032, 8. In particular, we find persuasive Dr. Traynor’s testimony that “a POSITA would have understood that an ‘integrated wireless communication interface’ speaks to a class of structures used to connect to wireless networks.” Id. According to Dr. Traynor, “[a] POSITA also would have readily recognized that a ‘wireless communication interface’ is often used to ‘enable one or more of an application, a function, and a service’ by enabling wireless communication of information . . . necessary to access or otherwise invoke that application, function, or service.” Id. at 10. Dr. Traynor cites to various technical dictionaries to persuasively support his testimony. See Ex. 1021 (WILEY ELECTRICAL AND ELECTRONICS ENGINEERING DICTIONARY), 11–12; Ex. 1023 (NEWTON’S TELECOM DICTIONARY), 5; Ex. 1024 (THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS), 5–7; Ex. 1025 (MICROSOFT COMPUTER DICTIONARY), 3–4. Thus, although Patent Owner argues that claim 1 invokes § 112(f) (PO” slip op. at 19

  Patent outcomesUS 10,073,960 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,073,960

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