• Samsara Inc. v. Motive Technologies, Inc.No claims unpatentable
  PTAB · Jul 29, 2026 · IPR2025-00574 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–7 were not shown unpatentable because the asserted combinations did not establish the claimed video overlay and transmission for manual review.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s contentions in this ground do not cure the issues for limitations 1D and 1E. Petitioner’s contentions in this ground involve combining Khan and Ali’s teachings of identifying a horizon line and lane lines with Choe. For example, Petitioner argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have combined known elements according to known methods to yield predictable results” and that “[i]mplementing these known mathematical models in Choe’s calibration system, according to their known functions, would have yielded predictable results.” Pet. 39. Petitioner further argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have used a known technique (predictive models) to improve similar devices in the same way” and that “[u]sing predictive models for Choe’s lane and horizon prediction would have also applied a known technique (predictive models) to a known device (a manual annotator device) ready for improvement.” Pet. 40. Petitioner’s proposed combination, therefore, still relies on Choe’s teachings of transmitting an overlaid image to an annotator device. We note that Petitioner asserts that, “[o]nce Khan in view of Ali identifies the horizon and lane lines, it overlays the horizon line and/or lane lines on the video, as shown in the screenshots below.” Pet. 41–42. Although Petitioner mentions Khan and Ali’s teachings with respect to video here, Petitioner does not adequately explain how the teaching of an overlaid video would be combined with Choe’s single image annotator teachings. As discussed above, Choe discloses transmitting a single overlaid image to the annotator” slip op. at 23

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

    “Thus, Petitioner has not provided sufficient evidence and argument to explain how the additional teachings of Khan and Ali teach limitations 1D and 1E in combination with Choe. Petitioner, therefore, has not demonstrated unpatentability of claims 1–5 by a preponderance of the evidence. F. Obviousness over Choe and Workman (Claims 1–4) Petitioner asserts that claims 1–4 would have been obvious over the combined teachings of Choe and Workman. Pet. 47–52; Pet. Reply 26–30. Petitioner asserts that, “if [Patent Owner] alleges that Choe does not explicitly disclose which predictive models it uses or whether it uses predictive models to identify the horizon line, a [person of ordinary skill in the art] would have searched for references that use predictive models and how such models were used,” which “would have led to Workman, which discloses predictive models to identify the horizon line.” Pet. 47. According to Petitioner, “[u]sing Workman’s predictive model to identify the horizon line would also have merely been combining known elements ([convolutional neural networks (CNNs)] and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way.” Pet. 48–49. Thus, Petitioner relies on Workman to teach a predictive model to identify a horizon line. See Pet. 47–49. Choe with respect to limitations 1D and 1E. Indeed, Workman involves horizon line estimation in single images. See Ex. 1011, 10 (§ 5) (“We introduced Horizon Lines in the Wild (HLW), a new dataset for single image horizon line estimation, to address the limitations of existing horizon line detection datasets.”). Petitioner, therefore, has not demonstrated unpatentability of claims 1–4 by a preponderance of the evidence.” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner criticizes Petitioner’s proposed level of ordinary skill for not requiring “any training or experience in ‘automotive systems,’ precisely what the ’580 [p]atent relates to.” PO Resp. 7. According to Patent Owner, a person of ordinary skill in the art would have had “a training and/or experience in design of software for camera/sensor systems in the automotive industry.” PO Resp. 8–9 (citing Ex. 2003 ¶ 35).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide 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))).” slip op. at 6

  Patent outcomesUS 11,875,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,875,580
• Røde Microphones, LLC / Freedman Electronics Pty Ltd. v. Zaxcom, Inc.No claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00230 · APJ Miriam L Quinn · IPR · Final written decision

  The Board determined that Petitioner had not shown any challenged claims of the ’443 or ’207 patents unpatentable, including under the asserted obviousness grounds.

  RulingsFinal written decision

  • Expert testimonySkill level petitioner adoptedOther

    “E. Level of Ordinary Skill in the Art Based on the argument and evidence presented in the Petition and Patent Owner’s preliminary response, we determined, as stated in our Decision on Institution, that “a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering and two or more years of experience working with audio and wireless communications systems.” 230 Dec. on Inst. 16; 232 Dec. on Inst. 22−23. Patent Owner reiterates its position that a person of ordinary skill the art would have had “a bachelor’s degree in electrical engineering or a related subject and two to five years’ experience working with multi-track audio and wireless communications systems in the professional performance industry.” 230 IPR, PO Resp. 6−7 (emphasis added) (identical passage in 232 PO Resp. 8). Thus, the dispute centers on whether the level or ordinary skill includes specific work experience with multi-track audio in the professional performance industry. We do not agree that this specific work experience is necessary to the level of ordinary skill in the instant proceedings. In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. 1, 17−18 (1966). “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu‑Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). In determining the level or ordinary skill, we may consider various factors including “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, 57 F.3d 1573, 1579, (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Patent Owner’s proposed specificity of work with multi-track audio in a professional performance industry is not supported by the record. First, Patent Owner submits conclusory declaration testimony of James DeFilippis—repeating verbatim, and without any supported reasoning, Patent Owner’s proposed level of ordinary skill. Ex. 2140 ¶ 15. As such, the testimony is not persuasive. Second, Patent Owner’s additional declaration testimony of Jack” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “data” means “mono or stereo audio files created from independent, isolated locally generated audio files, such files suitable for creation of a multi-track audio file.” 230 PO Resp. 9−10 (citing Ex. 2140 ¶¶ 131, 134). This argument is unsupported by the claim language or specification. The claim does not require the creation of audio files, much less a “multi-track audio file.” The specification describes storing audio files in memory without the specificity that Patent Owner urges we adopt. See 230 IPR, Ex. 1001, 13:1−14. Accordingly, we are not persuaded by Patent Owner’s proposed construction of “local audio data.” Rather, we understand “audio data” to have a plain and ordinary meaning, such as the one given to the term by the District Court in the underlying litigation. 230 IPR, Ex. 1037, 10. We adopt the District Court’s construction of “audio data” to mean “data comprising audio signals in digital form.” Id. This finds support in the specification as the audio is described as being converted into digital audio and stored in a file. See 230 IPR, Ex. 1001, 13:1−14. Our conclusion is consistent with the plain and ordinary meaning of the term as that would be understood by a person of ordinary skill in the art, and we see no reason to deviate from the conclusions of the District Court on this point.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “irrelevant under Federal Rules of Evidence 401–403. Patent Owner asserts that Petitioner has failed to establish that these documents reflect the understanding of a person of ordinary skill in the art, or that they are consumer-oriented documents, but not technical references or sources for understanding the meaning of claim terms. 230 IPR, Paper 64, 3−4. According to Patent Owner, these exhibits lack a “technical foundation” that establishes the technical meaning of a claim term. Id. We do not agree with Patent Owner as it conflates relevance with sufficiency of evidence to prove a contention on claim construction. Dictionary definitions are often useful when determining a claim term’s plain and ordinary meaning in the context of the specification, and as such are relevant when claim terms are disputed. Phillips, 415 F.3d at 1312. Furthermore, the evidence of record shows testimony as to whether the “Sweetwater” glossary entry for “body pack” would be relevant to the meaning of the term in the “world of wireless performance.” 230 IPR, Paper 67, 4 (citing Ex. 1073 ¶ 42). Patent Owner’s objections are overruled as to relevance.” slip op. at 116

  • BurdenFwd all claims patentableNot shown unpatentable

    “after a full and fair hearing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that any of the challenged claims are unpatentable.” slip op. at 125

  Patent outcomesUS 7,711,443 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,711,443
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Adobe Inc. v. Jonathan E. JaffeNo claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01352 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under any asserted §103 ground because the references did not teach monitoring the physical coupling between the sensor and memory.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Institution Decision adopted and applied Petitioner’s proposed level of ordinary skill because Petitioner’s “definition generally comports with the level of skill necessary to understand and implement the teachings” slip op. at 11

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

    “The parties present various claim construction arguments, disputing the meaning of three limitations recited in claim 1: “a sensor, which is tightly coupled to said memory”; “monitoring the integrity of the tight coupling between said memory and said sensor”; and “based on.” See Pet. 9–14; PO Resp. 5–12; Pet. Reply 4–9; PO Sur-reply 4–11. For purposes of this Decision, we do not need to discuss the construction of “based on.” 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)). As explained below, this Decision turns on whether Glass or Rieger discloses limitation [1c] reciting “monitoring the integrity of the tight coupling between said memory and said sensor.” Ex. 1001, 20:65–66; see infra §§ II.C.2, II.E.1, II.F. That limitation recites an element which overlaps with the earlier-recited limitation “a sensor, which is tightly coupled to said memory.” To reach our decision, we need only provide a limited discussion of two of the parties’ claim construction arguments. Our analysis follows.” slip op. at 13

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

    “said integrity is compromised, then also providing an indication of said compromised integrity.” Ex. 1001, 20:65–21:2. Although Petitioner points out that the limitation does not expressly recite “‘specifically’ monitoring the tight coupling” (Pet. Reply 8), the structure of the clause suggests that the tight coupling is specifically monitored. At a high level, the limitation is straightforward in its recitation that the integrity being monitored is “of the tight coupling” (Ex. 1001, 20:65–66 (emphasis added)), plainly suggesting that the tight coupling is specifically monitored. More granularly, breaking the relevant clause down to its grammatical parts, the clause recites a gerund (“monitoring”) acting on a direct object (“the integrity”) which is modified by a prepositional phrase (“of the tight coupling”). Notably, the object of the preposition (“of”) is “the tight coupling.” Altogether, this reads that the integrity being monitored is specifically of the tight coupling. Also, the claim recites that “if said integrity is compromised, then also providing an indication of said compromised integrity.” Therefore, from the claim language we know that the “integrity” of the tight coupling is something that may be “compromised,” which is consistent with Patent Owner’s proposed construction of determining whether the physical coupling has been “accessed or disturbed.” Petitioner’s interpretation effectively inserts additional language into the limitation such that the limitation includes monitoring the integrity of a device containing or surrounding the tight coupling, such as a camera (or camera housing), e.g., “monitoring the integrity of a camera that includes the tight coupling.” But, because the plain reading and the structure of the limitation reads that it is specifically the tight coupling’s integrity—not another physical structure, like a camera—which is being monitored, a monitored is not consistent with the language of the claim. See PO Resp. 9 (arguing that “Petitioner’s construction is improper because the claim language explicitly requires monitoring the physical coupling between the memory and the sensor as opposed to some third structure” (emphasis omitted)).” slip op. at 17

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

    “package 50 does not specifically monitor the integrity of the coupling between Glass’s sensor and the memory and, instead, argues that Glass detects tampering of all “the components and interconnections contained in that packaging,” e.g., control logic 44, cropper 46, compressor 47, MUX 45, code generator 48, and the various interconnections between those components. See Pet. Reply 16; Ex. 1005, 5:13–41. As explained above, we construe “monitoring the integrity of the tight coupling between said memory and said sensor” to mean determining whether the physical 7 Petitioner does not assert that a person of ordinary skill in the art would have been motivated to modify Glass’s device in any way; Petitioner solely argues that Glass teaches limitation [1c], based on Petitioner’s proposed claim construction. See Pet. 30–32 (“Glass discloses this limitation.”); Pet. Reply 16–17 (“Glass and Rieger disclose the ‘monitoring’ step.”). disturbed, which specifically requires monitoring the physical coupling between the sensor and the memory. See supra § II.C.2. As we agree with Patent Owner that this limitation requires monitoring the physical coupling between the sensor and the memory, monitoring Glass’s tamper resistant package 50 does not teach or disclose “monitoring the integrity of the tight coupling between said memory and said sensor.” Accordingly, we determine that Petitioner fails to show that Glass teaches or suggests [1c] monitoring the integrity of the tight coupling between said memory and said sensor when said at least one internal and unique parameter is generated, and, if said integrity is compromised, then also providing an indication of said compromised integrity, as required by claim 1. Consequently, we determine that Petitioner has not shown, by a preponderance of the evidence, that the subject matter of claim 1 would have been obvious over Glass.8” slip op. at 30

  Patent outcomesUS 6,757,828 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,828
• Workspot, Inc. v. Citrix Systems, Inc.No claims unpatentable
  PTAB · Nov 17, 2020 · IPR2019-01002 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 5, 7–9, 12, 16, 18, 19, 23, 24, 29, and 30 were not shown unpatentable under either §103 ground because the references did not teach the required distinct content and web server limitations.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “We credit the testimony of Dr. Hernandez on step (a), as it explains in detail the deficiencies in Petitioner’s position and is consistent with the references’ disclosures discussed above. See Ex. 2004 ¶¶ 90–92, 95. Based on the full record developed during trial and for the reasons explained above, we are not persuaded by Petitioner’s arguments that Craft and Duursma teach step (a) of claim 1. Petitioner has not proven, by a preponderance of the evidence, that claim 1 would have been obvious based on Craft and Duursma under 35 U.S.C. § 103(a).” slip op. at 30

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Reply is improper because it was not raised adequately in the Petition. See Sur-Reply 9–11. Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Practice Guide at 74; see also Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 775 (Fed. Cir. 2018) (concluding that the Board did not err in refusing to consider portions of a reply declaration “rais[ing] a new obviousness argument for [a claim] limitation that could have been made in the petition” but was not); Intelligent Bio-Sys., 821 F.3d at 1369–70 (concluding that the Board did not err in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)). Petitioner in its Petition never referenced any specific “software” executed by web server 49a or “portion” of web server 49a, instead referring to the device throughout as a singular entity. See Pet. 50–63. The word “software” appears only four times in the Petition, and never in reference to web server 49a of Zoller. See id. at 52, 61, 66, 77. Mr. Zoller in his declaration likewise does not refer to any particular software or portion of web server 49a. See Ex. 1016 ¶¶ 119–163, pp. 106–123. Mr. Zoller’s” slip op. at 45

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We credit the testimony of Dr. Hernandez on step (a), as it explains in detail the deficiencies in Petitioner’s position and is consistent with the references’ disclosures discussed above. See Ex. 2004 ¶¶ 90–92, 95. Based on the full record developed during trial and for the reasons explained above, we are not persuaded by Petitioner’s arguments that Craft and Duursma teach step (a) of claim 1. Petitioner has not proven, by a preponderance of the evidence, that claim 1 would have been obvious based on Craft and Duursma under 35 U.S.C. § 103(a).” slip op. at 30

  • Skill levelSkill level board ownOther

    “Based on the full record developed during trial, including our review of the ’843 patent and the types of problems and prior art solutions described in the ’843 patent, we adopt the preliminary definition of the level of ordinary skill in the art, with one clarification. The definition includes both an education and a work experience component. The education component is satisfied by a bachelor’s degree in computer science or equivalent education. We see no reason why such an education must have been acquired in a “formal” setting as Patent Owner suggests—as opposed to, for example, via on-the-job training or work experiences that would be the equivalent of the education one would receive by obtaining a bachelor’s degree in computer science. We find that a person of ordinary skill in the art would have had a bachelor’s degree in computer science (or equivalent education) and 3–4 years of experience working with remote-accessed skill for purposes of this Decision.5” slip op. at 9

  Patent outcomesUS 8,135,843 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,135,843
• Twilio Inc. v. Telesign CorporationNo claims unpatentable
  PTAB · Jun 26, 2017 · IPR2016-00360 · APJ Kimberly Mcgraw · IPR · Final written decision

  The Board found claims 1–4, 6, 7, 9, and 11–14 not shown unpatentable because the asserted combinations did not teach registering a user based on the phone carrier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ’034 patent would have had “at least an undergraduate degree in computer science, or equivalent experience, and in addition would be familiar with Internet communications and accessing databases.” Corrected 2 Nguyen (US 7,577,847 B2, filed Nov. 3, 2004, issued Aug. 18, 2009) (Ex. 1003). 3 De Petris (US 2004/0219904 A1, filed Apr. 6, 2004, pub. Nov. 4, 2004) (Ex. 1005). 4 Singhal (US 2004/0203595 A1, filed Aug. 12, 2002, pub. Oct. 14, 2004) (Ex. 1006). Pet. 9–10. Patent Owner does not dispute Petitioner’s assessment. PO Resp. 10–11. Based on the current record, including our review of the ’034 patent and the types of problems and solutions described in the ’034 patent and cited prior art, we agree with Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest reasonable construction standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We determine that only the registering step of claim element 1[e] requires explicit construction and only to the extent necessary to resolve the controversy. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (noting that claim terms need only be construed to the extent necessary to resolve the controversy). “[e] registering the user through at least one of the communication networks based on the type of phone, the phone carrier, the geographic characteristics associated with the telephone number and the verification message” With respect to the “registering the user” phrase in claim element 1[e], we note that the parties appear to agree that the phrase means “storing user-specific data.” See Corrected Pet. 22; PO Resp. 14. For the purposes of this Decision, we adopt the parties’ construction and construe “registering the user” to mean “storing user-specific data.”” slip op. at 9

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

    “interpretation of the “registering . . . based on” language in claim 1 is an overly broad construction that is not reasonable in light of the Specification. Instead, we agree with Patent Owner and interpret the phrase “registering the user . . . based on the type of phone, the phone carrier, [and] the geographic characteristics associated with the telephone number” as recited in claim element 1[e] to mean using the recited items (i.e., phone type, phone carrier, and geographic characteristics) as criteria or factors when storing user-specific data. Under this construction, the phone carrier is one of the criteria or factors that are used when storing user-specific data. As an initial matter, we agree with Patent Owner that “registering the user . . . based on” the phone characteristics as recited in claim element 1[e] is not satisfied by merely determining those characteristics. See, e.g., PO Resp. 14–15. The claim language itself recites the determining step as claim element 1[b] and the registering step as claim element 1[e]. Thus, registering the user based on the phone carrier (step 1[e]) cannot be satisfied by merely determining the phone carrier (step 1[b]), as Petitioner’s proposed interpretation would appear to permit. Where a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention. See, e.g., CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (stating that absent evidence to the contrary, “we must presume that the use of these different terms in the claims connotes different meanings”).” slip op. at 12

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

    “Upon review of a fully developed record, we determine that Petitioner has not demonstrated that Nguyen teaches or suggests “registering the user . . . based on . . . the phone carrier.” Petitioner has not shown that Nguyen teaches or suggests that the phone carrier itself is used as a criterion or factor when storing user-specific data. We understand Petitioner to argue in the Corrected Petition that because Nguyen teaches determining each of the recited phone characteristics, and only registers the user after those characteristics are determined, Nguyen teaches registering a user based on those phone characteristics. See Corrected Pet. 45–47. Petitioner also states that Nguyen teaches that a player’s registration is either approved or rejected based on comparison step 235, which requires that collected player data is compared with “approval criteria.” Reply 18 (citing Ex. 1003, Fig. 2, 9:63– 67); see also Corrected Pet. 56 (stating that “[d]uring the registration process in Figure 2, Nguyen discloses approving or denying access to its gaming site or system upon determining characteristics of the received telephone number”). However, these allegations are not sufficient to establish that Nguyen teaches registering a user based on a phone carrier. Petitioner has not shown that the phone carrier itself is used as a criterion or factor when storing user-specific data. Although Nguyen teaches using “approval criteria” in determining whether or not to register the user, Nguyen does not disclose that the phone carrier is an approval criterion. Rather, Nguyen states that the approval criteria can include the laws of the jurisdiction where the player is located, the player’s credit rating, and the player’s relationship to owners/operators of the Internet casino. Ex. 1002, 9:54–57, Fig. 2, step 235. The gaming system determines whether to approve or reject the player’s registration “based on the comparison in step 235.” Id. at 9:63–64. The “registration approved” step 240 does not discuss a phone carrier; instead, approval requires (1) verification of whether or not the player’s registered location/address is within a jurisdiction that allows gaming, and (2) verification that the player is old enough to participate in gaming according to the rules of the jurisdiction. Id. at 9:63–10:2. Thus, Petitioner has not shown that Nguyen teaches using the “phone carrier” as a criterion or factor when storing user-specific data.” slip op. at 23

  Patent outcomesUS 7,945,034 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,945,034
• Hulu, LLC / Netflix, Inc. et al. v. CRFD Research, Inc.No claims unpatentable
  PTAB · Jun 1, 2016 · IPR2015-00259 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–6, 8–11, 13–15, 17–20, 23–25, 29–31, 34–36, and 38–41 were not shown unpatentable because the prior art did not teach transmitting session history after discontinuing the session.

  RulingsFinal written decision

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

    “Claim Term Interpretation “modality” a preferred mode of interaction “device profile” information pertaining to the operation of a device, such as the data format or modality of the device “in response to . . . in response to the second device being made activation of said active, such as by a user logging on to the second device” second device “session” a series of information transactions between communicating devices during a particular time period “discontinuing” terminating or otherwise stopping, with the ability to be resumed “discontinued” terminated or otherwise stopped, with the ability to be resumed “session transfer computer hardware and/or software that module” participates in the transfer of a session See Dec. on Inst. 6–9; DISH Network Corp. v. CRFD Research, Inc., Case IPR2015-00627, slip op. at 6–9 (PTAB June 3, 2015) (Paper 9); Unified Patents Inc. v. CRFD Research, Inc., Case IPR2015-00157, slip op. at 6–9 (PTAB Apr. 30, 2015) (Paper 8); Iron Dome LLC v. CRFD Research, Inc., Case IPR2015-00055, slip op. at 6–10 (PTAB Apr. 27, 2015) (Paper 10). The parties do not dispute these interpretations in their Patent Owner Response and Reply. We do not perceive any reason or evidence that compels any deviation from these interpretations. Accordingly, we adopt our previous analysis for purposes of this Decision.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Having reviewed all of the parties’ arguments and supporting evidence, we conclude that Petitioner has not shown, by a preponderance of the evidence, that Bates expressly or inherently discloses transmitting the session history “after said session is discontinued on said first device.” See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255–56 (Fed. Cir. 1989) (“Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.”). We begin by noting that there is nothing in Bates explicitly disclosing when the alleged “session” ends. Petitioner acknowledged this at the hearing. Tr. 42:5–8. Bates, however, does disclose what occurs during a “session.” The term “session” in the claims means a series of information transactions between communicating devices during a particular time period. See supra Section II.A. Bates uses the slightly different term “browsing session,” which it defines as the “period of time when the browser 240 is executing on a client computer 106 and a network connection exists between the client 106 and the network 104 allowing a user to traverse network addresses corresponding to the servers 108.” Ex. 1004, col. 4, ll. 61–67. Thus, the “browsing session” in Bates is the period of time when the browser program is “executing” on the client computer and the client computer has an open connection to the network servers with which it is communicating. During this time, the client computer in Bates generates browser information in response to user input (e.g., by creating a history of websites visited by the user). See id. at Abstract (“A first browser executing on a first computer generates browser information in response to user input.”), col. 9, ll. 17–46 (describing the generation and storage of browser information in buffer 242), col. 2, ll. 2–10 (reciting “generating the user-configured browser information during execution of a first network browser on a first computer in response to user-input commands”), claim 1 (same). Accordingly, the alleged “session” in Bates (i.e., the series of information transactions between communicating devices) occurs during the time period of what Bates refers to as the “browsing session.”” slip op. at 13

  • Strike new argumentNew argument disregardedOther

    “that are procedurally improper and not entitled to consideration. Pursuant to 37 C.F.R. § 42.23(b), a reply “may only respond to arguments raised in the corresponding . . . patent owner response.” See also Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., – F.3d –, 2016 WL 2620512, at *8–9 (Fed. Cir. May 9, 2016) (concluding that the Board did not abuse its discretion in refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (PTAB May 6, 2016) (Paper 50) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”); Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed. Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely upon appropriate evidence to support the positions asserted. Reply evidence, however, must be responsive and not merely new evidence that could have been presented earlier to support the movant’s motion.”); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned. . . . Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, and new evidence that could have been presented in a prior filing.”). First, Petitioner provides a lengthy explanation as to how a person of ordinary skill in the art would have understood Bates to operate based on the alleged timing of Microsoft Windows shutdown signals and the interaction between a browser application and email software. Reply 6–9. Petitioner’s explanation amounts to a new theory for why Bates allegedly discloses transmitting the session history “after said session is discontinued on said first device” that was not discussed in the Petition. See Pet. 20–24 (citing only Bates’s disclosure of the events “upon user request,” “at shutdown,” and “at idle period”); Tr. 9:1–4 (acknowledging that shutdown signals are not discussed in the Petition). Indeed, Petitioner does not cite in its Reply any testimony from Dr. Claypool’s declaration or other evidence submitted with the Petition, but rather relies solely on the cross-examination testimony of Patent Owner’s declarant, Dr. Mohapatra. See Pet. 20–24 (citing Ex. 1003); Reply 6–9 (citing Ex. 1018); Tr. 13:18–21.” slip op. at 18

  • Skill levelSkill level board ownDecided for patent owner

    “KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). Petitioner argues that a person of ordinary skill in the art would have had “a Bachelor of Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent field as well as at least two years of academic or industry experience in the software field,” citing the testimony of Dr. Claypool. Pet. 8 (citing Ex. 1003 ¶¶ 55–58). Dr. Mohapatra similarly testifies that a person of ordinary skill in the art would have had “a Bachelor of Science degree in computer science or computer engineering with approximately 2 years of practical work experience or post-graduate research in a field such as computer networking and/or distributed systems.” Ex. 2001 ¶ 11. Based on our review of the ’233 patent, the types of problems and solutions described in the ’233 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art would have had a bachelor’s degree in computer science or computer engineering (or its equivalent), and at least two years of experience with computer networking, distributed systems, or similar fields. See, e.g., Ex. 1001, col. 1, ll. 5–67 (disclosing that “[t]he invention generally relates to session management in a distributed computer network,” and describing issues in the prior art when a user has “several communication-enabled devices” and wants to switch between them). We apply this level of ordinary skill in the art for purposes of this Decision.” slip op. at 21

  Patent outcomesUS 7,191,233 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 7,191,233
• Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentable
  PTAB · May 26, 2015 · IPR2014-00367 · APJ Georgianna W Braden · IPR · Final written decision

  Petitioner did not prove claims 2–4, 7–10, 14–18, 22, 23, 26, 27, 29, 30, 33–40, 42–45, 48–51, 54–59, 63, and 64 unpatentable under either instituted §103 ground.

  RulingsFinal written decision

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “We find that regardless of the construction of the term “spill,” Petitioner has not carried its burden to show that Angros is analogous art, because Petitioner has not shown Angros to be pertinent to the entire problem faced by the inventors of the ’561 patent.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “Furthermore, a patent claim “is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 401. “Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 421). For an obviousness analysis, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR, 550 U.S. at 419. In that regard, Mr. Schechter, witness for Petitioner, testified that Angros and Picken were known in the art and that one of ordinary skill in the art would have been motivated to combine the teachings of the prior art so as to make a design that (i) was more simple or clean or aesthetically pleasing and (ii) had a less obtrusive hydrophobic barrier. Ex. 1121, 180:12–183:23; Ex. 1109 ¶ 31; Ex. 1010 ¶ 28. He then concluded that one of ordinary skill would know how to substitute the spill-contain border in Angros for the plastic guard in Picken. Ex. 1109 ¶ 36. Mr. Schechter, however, does not explain sufficiently why a person of ordinary skill in the art would look to the field of microscope slides to find a hydrophobic coating to act as a less obtrusive spill containment border in place of the plastic rim in Picken. Mr. Schechter’s testimony is impermissible hindsight; he opined that all of the elements of the claims disparately existed in the prior art, but fails to provide sufficient reason for why one of ordinary skill in the art at the time of filing would have combined these references. See, e.g., InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1348–49 (Fed. Cir. 2014) (holding expert testimony to be impermissible hindsight for failing to explaining what reason or motivation one of ordinary skill in the art at the time of the invention would have had to place the prior art together). In an obviousness determination, we must avoid analyzing the prior art through the prism of hindsight. Instead, we must “cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then–accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983). Petitioner attempts to imbue one of ordinary skill in the art with knowledge of the claimed invention, when no prior art reference or references of record convey or suggest that knowledge. Rather, Petitioner’s argument that Angros is analogous art and that Angros is combinable with Picken appears to be premised on Petitioner’s knowledge of the ’561 patent disclosure. Petitioner bears the burden of showing by a preponderance of evidence that the asserted prior art references are analogous art and otherwise combinable. On the record before us, we find that Petitioner has not shown that Angros qualifies as prior art under 35 U.S.C. § 103 or that, even if it did, it renders the claims unpatentable in combination with Picken. Therefore, we conclude Petitioner has not demonstrated by a preponderance of evidence that claims 2–4, 7–10, 23, 33–40, 42–45, 48–51, and 64 of the ’561 patent would have been obvious in view of Angros and Picken.” slip op. at 27

  • Skill levelSkill level board ownDecided for patent owner

    “Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.C.1) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1101, 1:16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1109 ¶¶ 1–3 (describing the background of Mr. Schechter); Ex. 2121 ¶¶ 5–7 (describing the background of Mr. Mills). Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Given the stated qualifications of Mr. Mills (Ex. 2121 ¶¶ 5–7 and Ex. 1110, 13:9–24:18), Patent Owner’s declarant meets the requirements of this definition. Petitioner’s witness, Mr. Schechter, however, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter now testifies that he has a Master’s of Science degree in Mechanical Engineering and became a Product Development Engineer for Petitioner in December 2010, his prior declaration states that he began in his position in December 2011, compare Ex. 1109 ¶ 1, with IPR2013-00358, Ex. 1010 ¶ 1, thus indicating that Mr. Schechter may have had less than two years of experience when he signed his prior declaration on June 14, 2013, IPR2013-00358, Ex. 1010 ¶ 36.3 Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1121, 26:2–13. Therefore, for these reasons, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight. 3 Petitioner argues that the Board “misapprehended” Mr. Schecter’s qualifications, and “committed four errors” in doing so, in the final written decision in IPR2013-00358. Reply 9–10. These arguments are improper, as they are directed to facts and determinations made in a different proceeding, and a “reply may only respond to arguments raised in the corresponding . . . patent owner response” under 37 C.F.R. § 42.23(b). Regardless, though, we disagree with Petitioner’s assertions for the reasons stated herein.” slip op. at 13

  Patent outcomesUS 8,286,561 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 8,286,561
• Customplay, LLC v. Clearplay, Inc.No claims unpatentable
  PTAB · Nov 5, 2014 · IPR2013-00484 · APJ Barry L Grossman · IPR · Final written decision

  Claims 16, 27, 28, 30–34, and 40 were not shown unpatentable under § 103(a) over Abecassis and Malkin.

  RulingsFinal written decision

  • Skill levelOther
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Petitioner also has not directed us to any persuasive evidence or argument that it would have been obvious to modify the configuration technology used for completed video maps in Abecassis to provide configurable navigation objects, each with configuration identifiers, as required in claim 16. Moreover, Petitioner has not provided any persuasive evidence or argument that it would have been obvious to compare each navigation object’s configuration identifier to a decoder’s configuration identifier, as claim 16 also requires. No apparent need would exist for this type of comparison step in the system of Abecassis, because each video map is configured to a specific device. Accordingly, the preponderance of the evidence does not establish that the combination of Abecassis and Malkin, on which this inter partes review is based, discloses or suggests the “configuration identifier” limitations recited in claim 16. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 16 is unpatentable over Abecassis and Malkin.” slip op. at 10

  • BurdenNot shown unpatentable

    “that it would have been obvious to modify the configuration technology used for completed video maps in Abecassis to provide configurable navigation objects, each with configuration identifiers, as required in claim 16. Moreover, Petitioner has not provided any persuasive evidence or argument that it would have been obvious to compare each navigation object’s configuration identifier to a decoder’s configuration identifier, as claim 16 also requires. No apparent need would exist for this type of comparison step in the system of Abecassis, because each video map is configured to a specific device. Accordingly, the preponderance of the evidence does not establish that the combination of Abecassis and Malkin, on which this inter partes review is based, discloses or suggests the “configuration identifier” limitations recited in claim 16. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claim 16 is unpatentable over Abecassis and Malkin. b. Disabling a Navigation Object Claim 27 requires the step of “providing for disabling of one or more of the” slip op. at 10

  Patent outcomesUS 7,577,970 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 7,577,970
• Schott Gemtron Corporation v. SSW Holding Company, Inc.No claims unpatentable
  PTAB · Aug 20, 2014 · IPR2013-00358 · APJ Georgianna W Braden · IPR · Final written decision

  The Board held claims 1, 13, and 25 not shown unpatentable: Angros was not shown to be analogous art, and the proposed combinations did not establish obviousness.

  RulingsFinal written decision

  • Skill levelSkill level board ownPetitioner expert discountedOther

    “Mr. Schechter testified that a person of ordinary skill in the art relevant to the ’561 patent “would have at least a bachelor’s degree in mechanical engineering and at least four years of experience designing and manufacturing shelf assemblies or equivalent education and training.” Ex. 1010 ¶ 4. Patent Owner’s witness, Mr. Richard Bruce Mills, defined a person of ordinary skill in the art relevant to the ’561 patent to be a person with at least an associate’s or bachelor’s degree and three years of experience working with shelf assemblies, and having familiarity with “encapsulated spill containing refrigerator shelves.” Ex. 2022 ¶ 8. Based on our review of the ’561 patent, the types of problems and solutions described in the ’561 patent and cited prior art, and the testimony of the parties’ declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention (i.e., as of June 27, 2008, as discussed above in Section II.B.3.a.) would have had a degree in mechanical engineering or a similar discipline, and at least three years of work experience with refrigerator shelf assemblies. See, e.g., Ex. 1001, col. 1, ll. 16–62 (stating that the ’561 patent relates to “shelving which may be adapted for use with refrigerators,” and describing conventional refrigerator shelf assemblies that use plastic molded parts to encapsulate shelves and silicone sealants to form physical spill containment barriers around the perimeter of the refrigerator shelving); Ex. 1010 ¶¶ 1–2 (describing the background of Mr. Schechter); Ex. 2022 ¶¶ 3–5 (describing the background of Mr. Mills). We note that under this standard, Petitioner’s witness, Mr. Schechter, does not qualify as a person of ordinary skill in the art. Although Mr. Schechter has a Master’s of Science degree in Mechanical Engineering, he has only worked as an engineer designing and manufacturing shelf assemblies since December 2011. Ex. 1010 ¶¶ 1-2. Thus, Mr. Schechter had less than two years of experience when he signed his declaration on June 14, 2013. Id. ¶ 36. Furthermore, Mr. Schechter was not a person of ordinary skill in the art at the time of the invention of the ’561 patent (i.e., June 27, 2008). Indeed, at his deposition, Mr. Schechter testified that he does not qualify as one of ordinary skill in the art under the definition in his declaration. Ex. 1011, 26:2–13. In this case, we accord the testimony of Mr. Schechter regarding the alleged obviousness of the claims less weight because he was not a person of ordinary skill in the art at the time of the invention disclosed in the ’561 patent.” slip op. at 17

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

    “Petitioner’s position is unpersuasive. Contrary to Petitioner’s characterization, Example 1 in the ’561 patent discloses only a demonstration of water retention by a shelf with a hydrophobic border. See Ex. 1001, col. 20, ll. 1–9. The patent recounts, in Example 1, a test to determine the amount of water retainable on a shelf, within a hydrophobic border, without leakage. Id. Thus, Example 1 does not show that the term “spill” merely means liquid placed on a surface. Therefore, we construe “spill,” in accordance with its plain meaning and consistent with the specification of the ’561 patent, to mean “an accidental or unintentional release of liquid.” See Ex. 2003; Ex. 1001, col. 11, ll. 28–49 (describing Figure 3 as illustrating “the concept that the hydrophobic surface 1030 will form a spill containment barrier,” and using soda can 1026 turned on its side as an example for “spilled liquid”).” slip op. at 7

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “entions. A As discusse ed in detail l below, we e conclude e that the ’2 273 prov visional app plication, w which is th he earlier fi iled of the two provis sional appl ications, su upports the e claim ele ements reci ited in clai ms 1, 13, a and 25. Ther refore, the ’561 paten nt is entitle ed to the Ju une 27, 200 08 filing da ate of the ’273” slip op. at 12

  • Obviousness (§103) › Analogous artNon analogous artNot shown unpatentable

    “A reference is considered analogous prior art: (1) if the reference is from the same field of endeavor as the claimed subjected matter, regardless of the problem addressed, or (2) if “the reference still is reasonably pertinent to the particular problem with which the inventor is involved,” even though the reference is not within the field of the inventor’s endeavor. Bigio, 381 F.3d at 1325. The “field of endeavor” test asks if the structure and function of the prior art is such that it would be considered by a person of ordinary skill in the art, because of the similarity to the structure and function of the claimed invention as disclosed in the application. Id. at 1325-27. It is necessary to apply “common sense” in “deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” Id. at 1326 (citations and quotation marks omitted). As to the “reasonably pertinent” test: A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. An inventor may well have been motivated to consider the reference when making his invention. If it is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. In re Clay, 966 F.2d at 659.” slip op. at 19

  Patent outcomesUS 8,286,561 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 8,286,561

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.