- Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-00101 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not shown unpatentable under the asserted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we” slip op. at 32
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. WHETHER THE PETITION IS TIME BARRED The parties dispute whether the Petition is time barred based on a” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“vacated the panel’s decision denying institution. Paper 12, 6. Among other things, the Director determined based on a “review of the current record” that (1) Menard is not a real party in interest in this proceeding and (2) Menard is not a privy of Petitioner. Id. at 5. Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Id. at 5–6.” slip op. at 3
- BurdenMixed
“U.S. Patent No. 10,299,336 B2 (“the ’336 patent”) (Exhibit 1001). For the reasons explained below, a preponderance of the evidence shows that claims 1–7, 9–15, and 18–20 in the ’336 patent are unpatentable and does not show that claims 8, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (2024).” slip op. at 2
Patent outcomesUS 10,299,336 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33
Patent outcomesUS 6,917,986 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,917,986 - Visa Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 29, 2025 · IPR2024-00490 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 3–8, and 10–16 are unpatentable over Oborne or Oborne and Purves; claims 2, 9, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 74–79). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Inst. Dec. 15. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Inst. Dec. 11.” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We have considered Petitioner’s arguments and Dr. Shamos’s testimony in light of Oborne’s disclosure, but find Patent Owner’s arguments and Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See, Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that, contrary to Petitioner’s position, “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for the second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. See Pet. 34–35; Ex. 1005 ¶ 228. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of “device fingerprinting” is limited, and does not describe how it would be implemented for a user with two devices. See PO Resp. 41–42. Therefore, Dr. Shamos’s cited Declaration testimony is “conclusory, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB August 24, 2022) (precedential); 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.”).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize the application of “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. However, we “must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (emphases added) (internal quotations omitted). Although Stafford discloses that the key signatures may be copied from the display or delivered to the user via email, Petitioner does not expand upon whether the user would also copy the image from the display, whether the image would be provided via email as well, or provide any other explanation other than that the image credential would be provided with the scannable key signatures. Ex. 1012 ¶¶ 97, 99; Pet. 60. Although a credential image would presumably need to be retrieved or generated in some manner, and associated with the key signatures in some manner, Petitioner also does not sufficiently explain how this would work in the proposed combination, or how the user would transmit the scannable key signature to the recipient. Although proof of physical or bodily incorporation is not required, a satisfactory explanation of “how the combination of the . . . references [is] supposed to work” is necessary to support “a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (finding no error where the Board required petitioner to explain how a person of ordinary skill in the art would have implemented petitioner’s proposed substitution). Petitioner fails to provide “a clear, evidence-supported account of the contemplated workings” of the proposed combination of Stafford and Purves. See Personal Web, 848 F.3d at 994.” slip op. at 62
Patent outcomesUS 11,329,973 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,329,973 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 25, 2025 · IPR2024-00545 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–6, 8–15, 17, and 18 are unpatentable as obvious over Neiss or Neiss and Hirasago; claims 7 and 16 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering (including automotive engineering), civil engineering (transportation systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems.” Pet. 2–3. Petitioner contends that “[a]dditional education could substitute for professional experience, and vice versa.” Id. at 3 (citing Ex. 1003 ¶¶ 1–19, 24–26; Ex. 1004). Patent Owner “does not dispute” Petitioner’s definition of the level of ordinary skill. See generally PO Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner’s interpretation of column 13, lines 40–44 of the ’161 patent to mean that a route may not have both an ending position or an intermediate position, but will have at least one of these positions. See PO Resp. 21. Patent Owner interprets “typically” in “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions” to apply to either “an ending position” or “any intermediate positions” (that is, an intermediate destination) but not to both. We see no grammatical reason to limit “typically” in this manner. Rather, the plain meaning of the quoted sentence suggests that, although not typical, a route may not contain an ending position, be that a final position or an intermediate position.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds. For the foregoing reasons, on this record, Petitioner has not shown, by a preponderance of the evidence, that claim 1 or its dependent claims 3 and 6–9 would have been obvious in view of the combination of Schramm and Clapper. Petitioner relies on the same contentions regarding the identical language recited in independent claim 10 (see Pet. 93), and so, for the same reasons, has failed to show, by a preponderance of the evidence, that claim 10 or its dependent claims 12, 13, and 15–18 would have been obvious in view of the combination of Schramm and Clapper.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds.” slip op. at 36
Patent outcomesUS 8,972,161 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,972,161 - 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 - Visa, Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 21, 2025 · IPR2024-00486 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 3–6, 8–18, and 21–33 are unpatentable as obvious; claims 2, 7, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 89–94). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of these fields.” Id. We adopted this proposed level of skill for the Institution Decision. See Dec. 6– 7. Patent Owner agrees with this definition of the level of ordinary skill in the art. PO Resp. 8 (citing Ex. 2009 ¶¶ 37–41). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’531 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Dec. 9. We also explained that we did not need to determine whether the term “OVER file” 8 necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file” for purposes of institution. Id. We also determined that Petitioner had made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” Id. at 10, 23–27. In its Response, Patent Owner states that no construction of “OVER file” is required and that “the claims may be confirmed under the Board’s construction.” PO Resp. 9 (citing Ex. 2009 ¶¶ 43, 46–48). In its Reply, Petitioner argues that Patent Owner is treating the Institution Decision’s construction “as requiring that the virtual representation itself (not merely the OVER file) be used for verification of the credential,” even though “the claims impose no such requirement on the virtual representation.” Pet. Reply 1–2 (citing PO Resp. 54). “For example,” Petitioner asserts, “verification in subsequent claim elements involves a scan associated with the OVER file, and while the OVER file ‘compris[es]’ the virtual representation, it may encompass other things.” Id. at 2 (citing Ex. 1047, 30:16–31:24; Ex. 1048 ¶ 27). We will consider this issue further below when construing the term “verified by an issuing agency.” Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Dec. 9.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner has provided sufficient articulated reasoning to support the rationale for the combination of Oborne and Purves for the teaching of the limitation “requesting the credential.” As Petitioner points out (Pet. Reply 15), in the discussion of claim 23, the Petition refers to claim 22, which requires “generat[ion] of the credential.” IPR487, Pet. 37; see also Ex. 1005 ¶ 301. That discussion explains that a person of ordinary skill in the art would be motivated to combine Oborne and Purves because “the teachings of Purves would be recognized as useful to add new credentials to the digital wallet of Oborne’s PPT apparatus (for example, where a user had not yet added any credentials, or where adding further credentials were desired).” IPR487, Pet. 35 (citing Ex. 1005 ¶ 295). Dr. Shamos testifies that the credential that Purves teaches is a new gift card or reloadable prepaid card. Ex. 1005 ¶ 294 (citing Ex. 1013 ¶ 83). The Petition explains that a person of skill “would generate the new credential,” as Purves teaches that a customer may obtain a new gift card or prepaid card. IPR487, Pet. 37 (citing Ex. 1013 ¶ 83). Dr. Shamos testifies that “when the processor determines that no matching credential is stored” “a new credential would be generated because “the purpose of Oborne’s tokens is to represent a credential” and “by generating the new credential, the user becomes able to benefit from 9 We note that Patent Owner does not assert that there would be any security concerns with the combination of Oborne and Purves under this ground, which is based on the Purves’ embodiment concerning requests for a gift card or prepaid card credential. See PO Resp. 48–50. 49 Oborne’s tokenization system, and if the credential was already stored, there would be no reason to generate it, since it would already exist.” Ex. 1005 ¶ 298. For claim 23, which “requests the credential from the issuing agency,” Dr. Shamos further testifies that “when new credentials were generated upon user request, such as the gift and prepaid cards taught by Purves. . ., it would be natural for the issuer to store such new credentials, at least until they were sent to the recipient, and more practically for as long as they remained valid, so that the issuer’s system would confirm their existence and validity.” Id. ¶ 304. Patent Owner does not present any arguments challenging the sufficiency of Petitioner’s showing as to claim 22. As explained for claim 22, Petitioner relies upon Purves to teach the generation of a credential like a gift card or reloadable prepaid card, which would be useful to have as a credential in Oborne, and Patent Owner does not dispute this rationale. IPR487, Pet. 35; see generally PO Resp. As Petitioner also explains, a user would want to store credentials like a gift card or reloadable prepaid card in Oborne’s PPT, at least until they were sent to the recipient, “and more practically for as long as they remained valid, so that the issuer’s systems could confirm their existence.” IPR487, Pet. 38. As Dr. Shamos testifies, this is taught by Purves’ disclosure of retrieving the user’s “payment account information from the payment account issuer,” with user’s consent, and the issuer responding with information for data for establishing a virtual wallet including a “payment account in a virtual wallet.” See Ex. 1005 ¶ 301 (citing Ex. 1013 ¶¶ 83, 107–108 (“The user may then indicate that they desire to add a new payment account to their virtual wallet”)). Accordingly, 50” slip op. at 49
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We also find Dr. Malek’s testimony on this point more persuasive than Dr. Shamos’s testimony. See Ex. 2009 ¶¶ 165–170; Ex. 1048 ¶¶ 35–39; 72 Pet. Reply 27–28 (citing Ex. 1048 ¶¶ 55–60). For example, Dr. Shamos testifies that the combination’s use of obscured credential images would not “have risked exposure of the key signatures themselves since the image does not depict or otherwise convey the key signatures.” Ex. 1048 ¶ 37. However, although Petitioner fails to sufficiently explain the proposed combination, as discussed above, presumably there is some relationship between the credential image and the key signatures, since the proposed combination purportedly allows for the user to identify items that were previously selected for release, in order to provide the relevant key signatures to the recipient. Pet. 62–63; Ex. 1005 ¶ 367; Ex. 1048 ¶ 33. In contrast, Dr. Malek testifies, and we agree, that providing an unencrypted image of a credit card, for example, would inform potential attackers of the payload of the credential that is being attempted to be securely transmitted which is a security vulnerability. Ex. 2009 ¶ 169. Although Dr. Shamos testifies that Purves teaches associating wallet items with obscured or representative images and that such representative images were routinely used in virtual wallets, Ex. 1048 ¶¶ 35, 38 (citing Ex. 1013 ¶ 85), we do not find this persuasive in the context of the proposed combination with Stafford’s system for securely storing, transmitting, and authenticating credential information relating to an entity, with use of key signatures. Ex. 2009 ¶ 160; Ex. 1012 ¶ 2. Accordingly, Petitioner’s generic reasons for the proposed combination, coupled with Petitioner’s lack of specificity as to the proposed combination, leads us to determine that Petitioner’s reasons explaining why a person of ordinary skill in the art would have combined Stafford and 73 Purves are not persuasive in light of the teachings of those references and the testimonial evidence provided by Dr. Shamos, as discussed above. Further, as also discussed, the prior art fails to teach an “OVER engine” as claimed. Therefore, Petitioner has not established by a preponderance of the evidence that the claims 1, 15, and 21 are unpatentable over Stafford and Purves. We determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 3–5, 7–14, 16, 18–20, 22–26, and 28–33, which depend from claims 1, 15, and 21, are unpatentable over Stafford and Purves. Further, we have reviewed Petitioner’s showing for the obviousness of claims 2, 6, 17, and 27 over Stafford, Purves, and Neafsey (Pet. 79–81), and the argument and evidence presented fail to remedy the deficiencies of the associated independent claims. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that claims 2, 6, 17, and 27, are unpatentable over Stafford, Purves, and Neafsey.” slip op. at 72
Patent outcomesUS 9,251,531 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,251,531 - Apple Inc. v. Masimo CorporationSome claims unpatentablePTAB · Jul 3, 2025 · IPR2024-00290 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–3, 6, 11–17, 21, 22, 27, 28, 32, 34, 36, 37, and 42–44 are unpatentable as obvious; claims 4 and 18–20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we deemed the differences in the parties’ proposals not material due to their substantial overlap, adopted Patent Owner’s proposal for purposes of that Decision, noted that the outcome of the Decision would not change if we adopted Petitioner’s proposal, and instructed the parties to “explain the differences and their relevance to the patentability issues in this case, and state whether any issue in the case turns on those differences” if either party continued to propose differing proposals during trial. Inst. Dec. 10–11. After institution, neither party has explained the materiality of the differences in their proposals or argued that any issues in this case turn on those differences. Based on our review of the parties’ proposals, we find Patent Owner’s proposal consistent with the level of skill exemplified by the prior art of record and the disclosure of the ’223 patent. Accordingly, we apply Patent Owner’s proposal in our analysis in this Decision. See Okajima, 261 F.3d at 1355 (“[T]he prior art itself” may reflect an appropriate level of the ordinary level of skill in the art. (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). The outcome of this Decision would not change if we applied Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive and reject Patent Owner’s argument that we should construe the limitation as requiring the absence of one parameter from the display prior to the replacement and the absence of the other parameter after the replacement. We do not view either requirement proposed by Patent Owner as justified based on our review of the claims, specification, and prosecution history.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“preponderance of the evidence that the combination of Naghavi, Hochstedler, and Burnes discloses all of the limitations of claim 1 and that a POSITA would have been motivated to combine the references in the manner Petitioner proposes with a reasonable expectation of success. See Pet. 9–30. Accordingly, we determine that Petitioner proves by a preponderance of the evidence that claim 1 would have been obvious based on Naghavi, Hochstedler, and Burnes.” slip op. at 58
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“proposed combination based on the argument that a POSITA would have been motivated to switch the layout responsive to a parameter value changing. Pet. 11–15 (citing Ex. 1003 ¶¶ 35–40, 47–52). For example, we agree with Petitioner that a motivation exists to change the layouts to “best suit the condition of [the] patient” because Naghavi expressly describes an “interactive and dynamic” GUI that “may automatically detect changes in health status . . . and automatically react and rearrange the available options to best suit the condition” of the patient. Ex. 1005 ¶ 63. The supporting expert testimony persuasively relies on this aspect of Naghavi when concluding that “such a change in the severity of a parameter can indicate a change in the patient’s health that may require close monitoring” and a POSITA “would have been motivated to implement this approach of the combination in order to achieve” Naghavi’s objectives. Ex. 1003 ¶ 48 (citing Ex. 1005 ¶ 63); see also Pet. Reply 23 (“[T]he rearrangement of parameters, as already suggested by Naghavi and implemented according to Hochstedler, advantageously ensures an easy-to-use user interface, e.g., by highlighting information that has changed to warrant user attention.” (citing Pet. 13–14; Ex. 1003 ¶¶ 42–43)); Ex. 1003 ¶¶ 42–43.” slip op. at 51
Patent outcomesUS 8,190,223 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,190,223 - Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentablePTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision
Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25
Patent outcomesUS 8,356,251 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,356,251 - Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentablePTAB · Jun 12, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Final written decision
Claims 22–26 are unpatentable as obvious; claims 1–21 were not shown unpatentable because the asserted combinations did not teach or justify the claimed server-side command conversion.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“attempts to extrapolate Mahajan’s specific teachings and specific architecture into a general principle such that specific commands are converted to universal commands and then universal commands are converted to specific commands regardless of the location of the process within a distributed system. See Tr. 14:5–11. Rather, we agree with Patent Owner that Petitioner’s extrapolation arguments are unsupported by Mahajan. We understand Petitioner argues that Mahajan’s “distributed computing environments” would have rendered it obvious to alter the location where command conversions occur. Pet. 41; Reply 10–11, 14. Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain” slip op. at 24
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25
Patent outcomesUS 8,356,251 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,356,251 - Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentablePTAB · Jun 12, 2025 · IPR2024-00322 · APJ Georgianna W Braden · IPR · Final written decision
Claims 22–26 are unpatentable under § 103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. 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))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundMotivation foundMixed
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25
Patent outcomesUS 8,356,251 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 8,356,251
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.