- Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co., Ltd.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Yealink (USA) Network Technology Co. Ltd. / Yealink Network Technology Co., Ltd. v. Barco N.V.InstitutedPTAB · 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 · GrahamPatents in suitUS 10,684,972 - Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentablePTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“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, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44
Patent outcomesUS 10,806,124 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,806,124 - Google LLC v. Brodti Inc.InstitutedPTAB · Jul 24, 2025 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 10, and 19 are obvious over Nicholas, Laidlaw, Mayadas, and Error.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Considering the subject matter of the ’898 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1002 ¶¶ 9–12), we apply the level of skill set forth above.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner submits that all terms in the Challenged Claims should be given their plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required to resolve this case. Pet. 6 (“Petitioner does not believe express claim construction is necessary to resolve this Petition.”). Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues the skilled artisan would have had various rational reasons for combining the teachings of these four references, and would have had a reasonable expectation of success in doing so. See, e.g., Pet. 18–21 (discussing reasons to combine Nicholas and Laidlaw and expectation of success in doing so), 33–37 (discussing reasons to combine Nicholas and Mayadas and expectation of success in doing so), 44–45 (discussing reasons to combine Nicholas, Laidlaw, Mayadas, and Error and expectation of success in doing so). Based on the record before us, we find Petitioner sufficiently shows that the combination of Nicholas, Laidlaw, Mayadas, and Error would have taught or at least fairly suggested to the skilled artisan the limitations of claim 1.4 Thus, for the reasons stated in the Petition (Pet. 8–51), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that independent claim 1 would have been unpatentable as obvious over the combination of Nicholas, Laidlaw, Mayadas, and Error.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,898 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Apple Inc. v. DH International Ltd.InstitutedPTAB · Jun 25, 2025 · IPR2025-00172 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that claims 1, 10–12, and 19 are obvious over Suga and Gorsuch.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’294 patent. Accordingly, we institute an inter partes review of claims 1–20 of the ’294 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends: A person of ordinary skill in the art at the time of the alleged invention of the ’294 Patent (“POSITA”) would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or in a similar discipline with at least two years of experience with wireless communication devices and networks. More education can substitute for practical experience and vice versa. Pet. 10 (citing Ex. 1004 ¶ 34). Patent Owner states that it “agrees with Petitioner on the level of ordinary skill in the art.” Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 26–29).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Both parties rely on the language of claim 1 and the ’294 patent specification to support their respective constructions, and they emphasize that a user’s selective triggering of the control device does not issue different activation commands or control which data conveyance operation is used. Claim 1 recites an “invariable activation command” as a command that is “issued when said control device is selectively triggered by the user.” selectively trigger a control device “via one of a button, a keypad, a tactile screen, and a biometric parameter detector,” e.g., by entering a PIN that is authenticated, in order for an invariable activation command to be issued. Id. at 8:43–50, 10:26–29, 19:3–5. The claimed function of an invariable activation command is to “initiate[]” either a “first data conveyance operation” or a “second data conveyance operation” depending on whether “said switching element is in said first state” or “in said second state.” As explained above, the state of the switching element depends on whether or not an “activation cue” has been received by a “cue receiver.” The ’294 patent specification confirms the operation. Id. at 10:26–36, 15:14–28. The parties joust over the proper terminology for characterizing an “invariable” activation command, but they appear to agree on how the claimed cell phone and method work. The ’294 patent specification makes clear that the activation command is “invariable” in the sense that whenever a user selectively triggers the control device on the cell phone, for example by pressing a button on a keypad, the same command is issued to initiate a data conveyance operation regardless of the “state” of the “switching element” (i.e., in a “first state” or “second state”). The user cannot select or issue different activation commands. The selection of which of the two possible data conveyance operations will be initiated by selectively triggering the control device depends not on the activation command—it is always the same—but on whether the switching element has received an activation cue (“first state”) or not (“second state”). The ’294 patent neatly summarizes that “[t]he same invariable activation command will thus be issued upon [the] control device being triggered, and it is the state of [the]” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The ’294 patent claims and specification make clear that the switching element switches between a “first state” and a “second state” depending on whether or not an activation cue is received. Ex. 1001, 9:28–41, 14:53–59. The state of the switch, in turn, “allow[s] data to be conveyed according to alternate data conveyance operations.” Id. (emphasis added). Thus, the claim limitation is recited as a “data conveyance switching element,” not a “data switch,” because the switching element allows the device to switch between alternate operations for conveying data from the cellular phone to an external data exchange device. Id. Patent Owner’s proposed construction “conflicts with the express disclosure of the ’294 Patent.” See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (The “specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”) (citation omitted). On the present record, we determine that no further construction of claim terms is necessary to determine whether to institute a trial in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. &” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - Apple Inc. v. DH International Ltd.Institution deniedPTAB · Jun 25, 2025 · IPR2025-00173 · APJ Brian P Murphy · IPR · Institution
Institution was denied for claims 1–13 because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 584 U.S. 357, 371 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’333 patent. Accordingly, we do not institute an inter partes review of claims 1–13 of the ’333 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“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. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’333 patent and the prior art of record.” slip op. at 10
- BurdenNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“element” (limitation [1(e)]) onto a McGregor “device” placed in an RF field generated by Palmer’s reader/writer device. Pet. 28–31 (citing Ex. 1003 ¶¶ 95–105), 41–42 (citing Ex. 1003 ¶¶ 125–127). The Petition is unclear as to which McGregor device is being referenced, e.g., the smart card of Figure 2, the wallet embodiment of Figure 4, or some combination of embodiments disclosed in McGregor and Palmer. Id. Regardless, the proposed modification of McGregor in view of Palmer, as we understand it, is based on conclusory reasoning and appears to be motivated by hindsight rather than the teachings of the applied references. Prelim. Resp. 38–40 (citing Ex. 2001 ¶¶ 97–102). 7 Ground 2 challenges independent claim 11 for asserted obviousness over McGregor, Palmer, and Tuttle. The Petition’s reliance on Tuttle for its teaching of distinct data transmitter, data receiver, and cue receiver ports does not alter our analysis for claim 11. Pet. 55–62. POSITA would have understood that a series of instructions would be programmed into McGregor’s microprocessor to function as a switching element (pursuant to Palmer’s teachings), and as described.in the ’333 Patent. See Claim [1(b)]; see ’333 Patent, 6:9-14. Accordingly, McGregor’s microprocessor is a switching element (1) that is placed into an activated state after receiving a handshake signal (an activation cue) that establishes a communication during the handshake process and (2) that remains in an inactivated state if no reader/writer device is detected (no activation cue). Ex. 1003 ¶ 127 (emphases added). Dr. Buehrer’s citation to the ’333 patent, without explaining his mapping of limitation [1(e)] onto McGregor-Palmer beyond a general reference to 10-plus pages of limitation [1(b)] “control device” analysis, suggests hindsight reasoning. Id; see also Pet. 42 (generally referring to limitation [1(b)]). The Petition’s analysis, moreover, does not address why or how McGregor’s microprocessor would “accordingly” act as a data conveyance switching element or why a POSITA would want to program McGregor’s microprocessor to execute such a switching function in view of Palmer. We find the Petition and Dr. Buehrer’s testimony lacking in articulated reasoning supported by rational underpinnings sufficient to support the conclusion that limitation [1(e)] reads on the proposed McGregor-Palmer combination. See KSR, 550 U.S. at 418 (“there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The Petition does assert an obviousness theory within the analysis of the “control device” limitation [1(b)]. Pet. 25–35 (citing Ex. 1003 ¶¶ 85– 109). The Petition asserts that a “POSITA would have been motivated to implement McGregor’s device pursuant to Palmer such that the security code would be automatically transmitted when the device detects the receive the security code.” Pet. 28; see also id. at 31 (“A POSITA would have been motivated to implement Palmer’s (1) RF field detection and handshake processes and (2) Palmer’s transceiver hardware in McGregor’s device.”) (citing Ex. 1003 ¶¶ 95–105). We find the Petition’s obviousness theory to be inherently inconsistent and non-specific with regard to the “data conveyance switching element” recited in limitation [1(e)].” slip op. at 16
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,628,333
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.