- PTAB · May 21, 2025 · IPR2025-00059 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–3, 5–9, 15, 16, 19, and 20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 (2024), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with two years of work experience in the field of user interface technologies, including e.g., graphical user interface technologies, or a related field” and that “[m]ore education can supplement practical experience and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 20, 21, 22–34). “Patent Owner applies [Petitioner’s] definition of a [person of ordinary skill in the art] for the purposes of [its] preliminary response but expressly reserves the right to urge a different definition . . . and support such definition with evidence including expert testimony.” Prelim. Resp. 9 (citing Pet. 5–6). Based on the preliminary record, we adopt Petitioner’s as yet undisputed level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“displays information selectively” has a meaning broader than Patent Owner’s proposal. In particular, claim 3 depends from claim 1 and recites: wherein modifying the display of the annunciator window further includes: displaying the changed state across a portion of the annunciator window; and masking at least one icon representing the device status, connectivity status, or messaging status, wherein the first display is on a first screen of the multi-display device, and wherein the second display is on a different second screen of the multi-display device. Ex. 1001, 30:1–9 (emphasis added). Dependent claim 8 and unchallenged dependent claim 12 recite similar limitations. Id. at 30:56–64, 32:8–14. The limitation “masking at least one icon representing the device status, connectivity status, or messaging status” of these dependent claims indicates that “displays information selectively” recited by the independent claims has a meaning broader than Patent Owner’s proposal of “display[ing] information in a way that involves intentionally choosing some information to display and not others.” Prelim. Resp. 7. At this stage, on the preliminary record, we determine that, in view of the language of dependent claims 3, 8, and 12, the phrase “wherein the modified display of the annunciator window displays information selectively across the annunciator window” of the independent claims has a meaning broader than Patent Owner’s proposed interpretation. Prelim. Resp. 7–8. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Also, on the present record, Petitioner argues sufficiently that Yook’s status bar on screen 140 displays information showing device status and connectivity status. Pet. 33. Furthermore, on the present record, Petitioner sufficiently argues that one of ordinary skill in the art would have been motivated to implement and pre-configure Yook’s status bar to display dynamically the device status and connectivity status, so that Yook discloses or suggests “wherein the modified display of the annunciator window displays information selectively across the annunciator window.” Id. at 33–36, 38–39. In other words, as we understand the argument, Petitioner associates dynamically updating a status via a status icon with “display[ing] information selectively.” See id. at 38–39; Ex. 1002 ¶ 67. Moreover, even if we adopted Patent Owner’s proposed interpretation for “displays information selectively,” Petitioner’s arguments for dependent claim 3 include contentions that Yook modified by Bauer would have “mask[ed] at least one icon representing the device status, connectivity status, or messaging status.” Pet. 53–55 (citing Ex. 1001, 26:45–50; Ex. 1002 ¶¶ 82, 83; Ex. 1007, 6:14–29, 6:33–42 (describing that “the interactive indicator (e.g., the icon 204 and the corresponding preview) are superimposed over the static indicators” and that “[o]nce the preview intensity of the static indicators may be restored”), 6:47–61, 7:22–27, Fig. 2A). At this preliminary stage, based on the arguments presented for dependent claim 3, Petitioner sufficiently shows that Yook and Bauer would have rendered obvious an annunciator window that “displays information selectively across the annunciator window,” as recited by claim 1, under an interpretation of that limitation meaning “displays information in a way that involves intentionally choosing some information to display and not others,” as proposed by Patent Owner. For the reasons above, Petitioner shows a reasonable likelihood of prevailing in its challenge to claim 1 as unpatentable over Yook.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,141,135 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag GmbHSome claims unpatentablePTAB · May 14, 2025 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–10 and 12–15 are unpatentable as obvious over either asserted combination; claim 11 was not shown unpatentable under either ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The only significant difference between the positions of Petitioner and Patent Owner is that Patent Owner would require that a skilled artisan have coursework or training or work experience in multimedia systems in addition to the other requirements. Otherwise, the positions of the parties are similar. Based upon this record and the qualifications on which the parties and their experts agree, we determine that a person of ordinary skill in the art to which the ’669 patent relates would have at least a Master of Science Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or a similar technical Master’s Degree; or alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or an equivalent field with two or more years of work experience in a relevant field or relevant industry experience. However, our decision on obviousness is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Accordingly, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . 4 Neither party argues lexicography or disavowal applies to any claim term. See generally Pet.; see generally PO Resp. that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We apply the plain and ordinary meaning to all the claim terms. To the extent it is necessary to address the meaning of any claim term in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, we address the meaning as part of our unpatentability analysis.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“[1.0] A video playback system (1), comprising The Petitioner contends that the preamble of claim 1 is not limiting. Pet. 17 (“The preamble of claim 1 is not limiting because it merely states the purpose or intended use of the alleged invention. It does not define any of the claim limitations, which are set forth fully in the body of the claim (i.e., a video playback system).”). Nonetheless, Petitioner cites both Swafford and Masumoto and shows both cited references disclose video playback systems. Id. at 17–18. Patent Owner does not dispute Petitioner’s contention that the preamble is not limiting or dispute that the cited art discloses the preamble. See generally PO Resp. We determine that the preamble is not limiting but, if it were, the cited art has been shown to teach it. [1.1] a number of playback devices (6A, 6B) to playback a video on their” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. PO Resp, 47–48. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. After considering all the arguments and evidence offered by the parties, we determine that Petitioner shows that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 48
Patent outcomesUS 11,405,669 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part
“c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27
Patent outcomesUS 10,674,340 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,674,340 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–21 were unpatentable over either asserted obviousness ground.
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 and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–21 of the ’342 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 ’342 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that fields are mapped “to one another using normalized variables stored in a normalized variable data database” as required by claim 1.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a POSITA “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 8 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner present claim construction in the Petition or Preliminary Response. Pet. 9; see generally Prelim. Resp. Nonetheless, Petitioner contends that Patent Owner’s construction of “universal variable map” is too narrow, but does not appear to offer an alternative construction other than to state that a “universal variable map” includes “a database that links variables from different websites to each other.” See Reply 1-2 (emphasis omitted) (“PO’s arguments for why Halevy’s ‘form database’ is not a universal variable map are all premised on improperly narrowing the term’s scope by adding restrictions that are unsupported by the intrinsic record.”). In the Sur-Reply, Patent Owner reiterates that it has not proposed a construction for “universal variable map.” Sur-Reply 1 (“Patent Owner did not present any claim construction arguments regarding that term, nor does that term’s construction have any bearing on the arguments set forth in the POPR for denying the Petition.”). Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01272 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Google did not show a reasonable likelihood that claims 1–20 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)). A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 14
- Skill levelSkill level board ownOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“While [Dr. Fox] asserts that Oldham’s external engine is the required “networked data source,” he does not identify any teaching in Oldham that there are any “field identifiers” in Oldham’s external engine. Dr. Fox then goes on to argue that “POSAs would have recognized that the SO-properties mapped to the keywords are determined ‘field identifiers of the networked data source stored in the universal variable data database’ based on the dynamic data because the SO-properties for each class are defined by the form engine and mapped to corresponding fields from various forms stored in the form database.” EX1003, ¶ 102. First, Halevy’s SO-properties obviously cannot be “field identifiers” of Oldham’s external engine, because Halevy’s SO-properties do not come from Oldham’s external engine. Rather, they are generated in Halevy’s system as part of the “database schema” of Halevy’s form database. See EX1006, [0038] (“In one embodiment of the present invention, the database describes web sources in terms of an ontology of classes and properties, which is referred to as the ‘search ontology’ (SO).”). In addition, Halevy’s SO-properties are not “field identifiers” at all. Rather, the SO-properties are simply search filters that assist Halevy’s search engine in determining a form’s degree of relevancy to the user’s keyword search query. See EX1006, [0137] (“[T]he system performs a lookup based on the structured query in the form database to identify forms of interest (step 608) and ranks these forms (step 610).”). Also I note that Dr. Fox argues elsewhere in his declaration that SO-properties are “normalized variables,” which even he recognizes are different from “field identifiers.” See, e.g., EX1003, ¶ 101 (“Halevy’s form engine determines field identifiers . . . by mapping keywords in the query to SO-properties (i.e., normalized variables) . . . .”). As described in the ’734 patent, “normalized variables” are used to create associations between field identifiers of different forms, but they are not themselves “field identifiers.” See EX1001, 15:65-16:3 (“In this way, once a site’s category is defined, the variable mapping exercise can be simplified to match which variables or identifiers match up with which normalized variable . . . .”). Thus, Dr. Fox fails to show any teaching or suggestion in the combination of Oldham and Halevy of the claim limitation “determining . . . field identifiers of the networked data source stored in the universal variable data database.” Ex. 2001 ¶¶ 59, 61–64 (underlining added). We adopt Dr. Malek’s testimony and reasoning above as our own.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“b. Halevy’s schema-mapping search engine Although Halevy’s schema-mapping system uses a common set of SO-properties for the form fields in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping for “mapping,” linking, or integrating the field identifiers (parameter names) of different forms on different websites to one another to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 30
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,152,734 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01269 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the level of ordinary skill in the art described in the Petition and applied in the Preliminary Response, which is consistent with the description in the ’626 patent and the prior art of record.” slip op. at 11
- BurdenNot shown unpatentable
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc) (quoting Magnum Oil). 8 The UVM Limitation is identified as [1.A] in the Petition and Preliminary Response. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art at the time the invention was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Obviousness is resolved based on underlying factual determinations, 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). A party who petitions the Board for a determination of obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)). We assess Petitioner’s evidence and argument according to the above- referenced obviousness standard. For the reasons given below, we determine Petitioner has not established that Belanger and Halevy disclose, teach, suggest or otherwise render obvious independent claim 1 of the ’626 patent. We begin with a discussion of Belanger and Halevy. slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although Halevy’s schema-mapping technique maps each form field to a common set of SO-properties in each SO-class, there is no disclosure, teaching, or suggestion in Halevy to use schema-mapping to “link” or integrate form fields (parameter names) of different forms on different websites to each other to generate deep-links. We find the Petition’s reasoning and the cited testimony of Dr. Fox on this crucial point to be conclusory. We also find the Preliminary Response to be persuasive, Dr. Malek’s testimony (Ex. 2001) to be credible, and the reasoning of both consistent with the disclosures in Halevy.” slip op. at 22
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,789,626 - Google LLC v. Metarail, Inc.Institution deniedPTAB · Apr 24, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of proving any of claims 1–26 unpatentable.
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 and the evidence of record, we conclude that there is not a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–26 of the ’378 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 ’378 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSA or POSITA) at the time of the invention of the ’378 patent “would have had a bachelor’s degree in computer science or a related field, and at least two years of experience with web programming and search engine systems[; m]ore education could substitute for experience, and vice versa.” Pet. 17 (citing Ex. 1003 ¶ 32). Patent Owner does not contest Petitioner’s proposal. Prelim. Resp. 9 (citing Ex. 2001 ¶¶ 35–36) (“Patent Owner and its expert apply this definition.”). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“(3) Discussion We observe first that “[Halevy’s] first step in processing a web source is to locate the forms in the source and to extract the text corresponding to the fields in the form.” Ex. 1006 ¶ 53. According to Halevy, the “web source is subsequently classified into the ontology classes.” Id. ¶ 55. Then, the “forms on the page are classified into the classes in the ontology.” Id. ¶ 57 (emphasis added). Halevy explains that this classification is used to predict what kinds of objects are in the databases queried by the form. Id. For “Schema Matching,” Halevy discloses “a mapping between the fields in the form and the SO-properties of the SO-classes[.]” Id. ¶¶ 61–62. Missing, however, from Halevy’s disclosure is any teaching or suggestion that a “plurality of computer-readable field identifiers” are mapped “to one another” as required by claim 1. Petitioner’s declarant, Dr. Fox, testifies that “[t]he ‘SO-classes’ are identified for each form and used to map the fields in the form (i.e., “the plurality of computer-readable field identifiers”) to one another using “SOproperties,” as shown . . . in annotated Figure 3.” Ex. 1003 ¶ 104 (citing Ex. 1006 ¶¶ 39–40, 45, 49, 62, 67). Yet, those cited portions of Halevy do not support Dr. Fox’s testimony. As Patent Owner’s declarant, Dr. Sam Malek, explains: the language highlighted by Petitioner in Figure 3 does not actually show that “[t]he ‘SO-classes’ are . . . used to map the fields in the form . . . to one another using ‘SO-properties,’” as he contends. Id. Rather, the language in Figure 3 that Dr. Fox has highlighted merely shows that, for any given form, there is “mapping between fields” of that form and “class properties.” EX1006, Fig. 3. In other words, fields in a form are mapped to class properties. Figure 3 does not show any mapping of fields to each other, as Dr. Fox argues.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,633,378 - PTAB · Apr 23, 2025 · IPR2024-01465 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of review of claims 1–19 under § 314(a), finding that the Fintiv factors overall favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“As noted above, the district court has set a trial date of October 6, 2025, which is almost seven months before the final written decision in this proceeding would be due in late April 2026. Although a number of cases may be scheduled for jury selection on the same day as the District Court Litigation, nothing in the record indicates a trial in the District Court Litigation would not take place months before our deadline to reach a final decision. Because the District Court Litigation will address the issues relating to the validity of the ’750 patent in a trial scheduled to occur several months before we would issue a final written decision, we weigh the second Fintiv factor as favoring discretionary denial.” slip op. at 9
Discretionary denialPatents in suitUS 11,087,750 - PTAB · Apr 23, 2025 · IPR2024-01464 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of inter partes review of claims 1–18 under § 314(a), finding that the Fintiv factors overall favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In considering these factors, we apply the guidance set forth in a Memorandum regarding “Guidance on USPTO’s recission of ‘Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,’” issued by the Chief Administrative Patent Judge of the Patent Trial and Appeal Board on March 24, 2025 (hereinafter, “Guidance Memo”).7” slip op. at 5
Discretionary denialPatents in suitUS 11,393,461 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to expressly construe any claim terms to resolve the parties’ disputes. 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))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709
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.