- Silencerco Weapons Research, LLC v. Huxwrx Safety Co. LLCNo claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 2, 3, 6, 9, 12–14, 18, and 20 were not shown unpatentable; the motion to amend was granted for substitute claims 23, 26, 27, 29, 30, 32, 33, 37–40, and 42, and denied for …
RulingsFinal written decision- Skill levelSkill level board ownOther
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The ’750 patent states that “the fluid pathway can be a radially serpentine fluid pathway which causes the fluids received in the off axis chamber to flow back and forth around a radius of the off axis chamber,” also using “radially serpentine fluid pathway” to refer to this rotation around the chamber radius “while also traversing a length of the off axis chamber.” Ex. 1001, 4:34–41 (emphasis added). This is the only description of “radially” serpentine flow in the ’750 patent. Notably, the ’750 patent does not use “radially” or “serpentine” to describe a fluid pathway “which causes the fluids to spiral around the central chamber within the off axis chamber along a length of the off axis chamber,” instead referring to such a fluid pathway as a “helical fluid pathway.” Id. at 4:41–44. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”). Inst. Dec. 11–12. We explained that the flow path depicted above, which is equivalent to that of Figure 14 of the ’750 patent, “flows circumferentially about the central chamber.” Id. at 14. We maintain this interpretation. Stated differently, the depicted flow is around a longitudinal axis of the chamber. See MTA PG 6 (describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber; that is, a circumferentially serpentine pathway”); see also Ex. 2003 ¶ 40 (Dr. Neitzel describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber”). The flow is not around a radius of the chamber, which Patent Owner recognizes is required for a flow path to be radially serpentine. See PO Resp. 10 (“Patent Owner agrees with the Board’s conclusion in the [Institution Decision] that ‘radially serpentine’ as recited in the claims of the ’750 patent means a back and forth flow around a radius of the off axis chamber.” (citation modified)); PO Sur-reply 2 (agreeing that “radially serpentine” requires “a back and forth flow around a radius of the off axis chamber”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor its witness, Mr. Nixon, has explained adequately how Thurler’s disclosure of its tube e being perforated for two thirds of its length “contemplates other lengths of perforations.” See Pet. 48; Ex. 1013 ¶ 212. Such conclusory assertions fail to apprise us of why an ordinarily skilled artisan would have been motivated to modify Thurler’s device in contradiction to Thurler’s explicit disclosure. We are also not persuaded by Petitioner’s proffered reasoning for modifying Thurler’s device. First, the modification is not a matter of design choice because the perforations allow the gases generated by firing the projectile to pass into the space between tubes e and g where they partially expand. See Ex. 1015, 1:84–91. Thus, modifying the number of perforations necessarily affects the flow of gases through the device. Next, neither Petitioner nor Mr. Nixon explains adequately how reducing the amount of perforation in tube e results in an increased fluid length. See Pet. 49; Ex. 1013 ¶ 213. Rather, although less fluid may enter into tube e with Petitioner’s modification, it appears that that fluid would travel the same distance along tubes e and h as in Thurler’s unmodified device. Finally, neither Petitioner nor Mr. Nixon explains adequately how limiting the amount of gases generated by firing the projectile from entering the expansion zones of tubes g and h provides any benefit. To the contrary, limiting the amount of gases in the manner suggested by Petitioner would reduce the suppression of such gases, resulting in a less effective device. Moreover, Thurler discloses that “there is still a space of a few millimeters between [tubes] e and g which is necessary” to prevent the application of “pressure on the projectile causing the same to deviate.” Ex. 1015, 1:106–2:3. Thus, Petitioner’s modification would not result in the passage of gases occurring only at the first three of Thurler’s tubular sleeves as asserted by Petitioner. Additionally, in the Institution Decision, we explained that Petitioner did not provide adequate reasoning to support the proposed modification of Thurler’s device regarding parent claim 1 to have concentric tubes around the central tube e. See Inst. Dec. 29–31. This shortcoming, which we maintain, carries through to dependent claim 6. Accordingly, for the foregoing reasons, Petitioner has not shown, by a” slip op. at 26
- ScopeMotion to amend granted in partGranted in part
“We agree with Petitioner that the amendment is broadening. Petitioner’s witness testified that he “wouldn’t call a BB gun a high energy device or a high energy weapon.” Paper 33, 18:4–6. Thus, per Petitioner’s witness, use of a BB gun would not be covered by claim 22, no matter what is discharged from the BB gun. However, if high energy material is discharged from that same BB gun, that use would be covered by proposed substitute claim 43 (assuming the other claim recitations were met). See id. at 21:10–12 (Dr. Neitzel agreeing that “if something produces a high energy material, it automatically is a high energy weapon”). Thus, by deleting “high energy device” and replacing that language with “weapon,” proposed substitute claim 43 impermissibly broadens the scope of claim 22. See Sisvel Int'l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1241 (Fed. Cir. 2023) (“But if a substitute claim ‘is broader in any respect it is considered to be broader than the original claim even though it may be narrower in other respects.’” (citation modified) (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999))); see also Lectrosonics, Paper 15 at 6 (“A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent . . . . Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent.”).” slip op. at 45
Patent outcomesUS 8,286,750 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentablePTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, 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.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, 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.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
Patent outcomesUS 8,291,243 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentablePTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision
The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48
Patent outcomesUS 6,947,477 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
“Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36
Patent outcomesUS 10,076,257 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.No claims unpatentablePTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24
Patent outcomesUS 11,106,352 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,106,352 - Lzlabs GmbH v. International Business Machines CorporationNo claims unpatentablePTAB · May 23, 2024 · IPR2023-00274 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–4, 6, 10–12, 16, and 17 were not shown unpatentable because Loderer did not teach a target machine condition code.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“c. Analysis We agree with Patent Owner. On this record, we find that Loderer does not teach or suggest the recited “target machine condition code.” Loderer says that “[t]he object of [its] invention is . . . to specify a method for simulating a condition code when porting hardware-specific program code from a source hardware to a target hardware that is not providing for condition code.” Ex. 1005, col. 1, para. 5 (emphasis added). Loderer’s claims are directed to “[a] method for simulating a condition code (CC), used for the execution of hardware-specific program code (PCU) for a source hardware (M1), in the program code (PCZ), obtained following transformation, for a differing target hardware (M2) with a machine architecture which operates without a condition code (CC).” Id., claim 1. In other words, Loderer’s target machine does not support condition codes, let alone a “target machine condition code.” Accordingly, Loderer does not teach or suggest a “target machine condition code.”” slip op. at 23
Patent outcomesUS 8,713,289 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,713,289 - Ebates Performance Marketing, Inc. D/B/A Rakuten Rewards v. International Business Machines Corp.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00438 · APJ Ken B Barrett · IPR · Final written decision
Claims 14–28 were not shown unpatentable because the petition did not establish that the asserted combination taught interactive execution of the ordering and annotation function.
RulingsFinal written decision- Expert testimonyOther
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have at least a bachelor’s degree in computer science or a related field, plus at least one year of experience in the design and/or implementation of computerized information retrieval technology,” and that “[a]dditional education in the field of computer science may serve as a substitute for experience in the field.” Pet. 8 (citing Ex. 1003 ¶ 29). Patent Owner states that, “[f]or purposes of this proceeding, [Patent Owner] adopts Petitioner’s 4 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. proposed level of ordinary skill in the art.” PO Resp. 21 (citing Ex. 2011 ¶¶ 30–35). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“wherein the ordering and annotation function is executed interactively at the time of each user query” contains two requirements: 1) how the function is executed (“interactively”) and when the function is executed (“at the time of each user query”). Petitioner, in effect, reads out of the claim the “interactively” requirement. Petitioner offers no persuasive reason as to why that is correct. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of that claim against the prior art.”). Petitioner, for its proposed claim construction of a single requirement, primarily relies on the Specification’s statement that “the ordering and Annotation step 345 is executed interactively, e.g., at the time of every user query.” Ex. 1001, 8:10–12; see Pet. Reply 12–13 (citing the same for the proposition that “[t]he ’676 patent specification also ties the terms together”); Tr. 16:3–12 (“it’s clear the specification is saying that interactively means at the time of every user query”). Petitioner’s reliance on this statement is misplaced. First, Petitioner agrees that the plain and ordinary meaning of “interactively” means “some sort of interaction with the system,” that the inventor did not utilize its own lexicography to redefine the term “interactively,” and that the Specification does not evidence a disavowal of claim scope. See Tr. 19:4–20. Consistent with that, Petitioner acknowledges that the quoted part of the Specification merely is an example, and is not defining “interactively” as limited to that example. See id. at 19:19–25. Second, Petitioner misreads the Specification as indicating that “at the time of every user query” is an example of “interactively.” See, e.g., id. at 21:25–22:1 (“the way I read this is at the time of every user query is modifying what interactively means”). Rather, the better reading of the Specification’s phrase “executed interactively, e.g., at the time of every user query” is that “at the time of every user query” (as opposed to some other time) is an example of when the function may be interactively executed, not that the two phrases on either side of the “e.g.” are synonymous. slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“annotation function . . . for comparing the user’s ‘user profile’ to the results obtained in the initial search.” Id. at 40–41 (citing Ex. 1005 ¶¶ 111–112, 116–117). Petitioner then concludes that, “[t]hus, Uchiyama discloses limitation [14d-2].” Id. at 41 (brackets in original) (citing Ex. 1003 ¶¶ 157– 160). Petitioner also asserts that: At a minimum, it was obvious to a [person of ordinary skill in the art] to have Uchiyama’s system compare a user’s profile to the returned search results “interactively at the time of each user query” so as to achieve Uchiyama’s goal of returning “more meaningful” search results as “the database grows” and “the search results for the same query improve over time.” (Ex-1005 at ¶0026; Ex-1003-Crovella at ¶162.) Hence, Uchiyama also renders obvious limitation [14d-2]. Id. at 41–42 (brackets in original). However, Petitioner does not elaborate on or explain the basis for this conclusory assertion of obviousness. Id.; see also Ex. 1003 ¶ 162 (Dr. Crovella stating the same). Although Petitioner’s analysis of limitation 14d-2 addresses the timing of the execution of the ordering and annotation function (the recited “at the time of each user query”), the analysis does not contain any form of the claim term “interactively,” other than when quoting the claim language. See Pet. 39–42. Thus, the Petitioner does not clearly and persuasively explain how “interactively” is disclosed or taught by Uchiyama.” slip op. at 17
Patent outcomesUS 6,785,676 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,785,676 - Chanel, Inc. v. Molo Design, Ltd.No claims unpatentablePTAB · Aug 9, 2023 · IPR2022-00543 · APJ Richard H Marschall · IPR · Final written decision
Claims 1–3, 5–11, 13, 16, 18, 20–25, and 27 were not shown unpatentable under any of three §103 grounds because Petitioner failed to establish the claimed foldable supports and fastener arrangement.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues, with support from its declarant, Mr. Rake, that one skilled in the art during the relevant time frame “would have a bachelor’s degree and at least two years of relevant experience working as an industrial designer, interior designer, furniture designer, architect, or other similar professional” and “would be knowledgeable regarding furniture design and/or the design of exhibit and display systems, and would have a general understanding of related manufacturing processes.” Pet. 24 (citing Ex. 1003 ¶¶ 41–44). Patent Owner does not contest Petitioner’s proposal, and Patent Owner’s declarant agrees with it. Ex. 2010 ¶ 34 (“I believe this is an accurate definition of a POSITA and have used this for my analysis.”); see also Pet. Reply 1 (“The parties agree on the POSITA and level of ordinary skill in the art.”). We adopt Petitioner’s asserted level of ordinary skill because it is consistent with the problems identified and solutions provided in the ’366 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Because the issue of whether Petitioner has proven unpatentability by a preponderance of the evidence can be resolved without expressly construing the claim terms “supports,” “self-supporting,” “operable,” and “flaccid,” we reject the notion that Petitioner somehow violated our rules by not developing a more explicit construction of those terms. In addition, because Patent Owner does not dispute Petitioner’s position that we need not formally construe any of the terms to address the issues in this proceeding or offer a competing construction, we need not construe any of these terms. See, e.g., Nidec, 868 F.3d at 1017 (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Even if we consider an argument that claim 1 would have been obvious without considering whether a POSITA would have been motivated to fold the SoftHousing end panels into a tubular configuration, we would not find that argument convincing. None of the prior art at issue here discloses partition end panels that are semi-circular as in the design the ’366 patent discloses, much less flexible panels folded into that configuration. Instead, both SoftHousing and Arens disclose end panels having unfolded, planar surfaces, and the Velcro reference does not teach partitions at all. See Ex. 1005, 2; Ex. 1006, 11; Ex. 1007, 2; Ex. 1012, 2; Ex. 1013, Fig. 3; PO Resp. 34–35; Ex. 2010 ¶ 124. Further, merely adding the Velcro teachings from SoftHousing III, Arens, or the Velcro reference to the planar end panels of SoftHousing would not necessarily satisfy the claim limitation requiring a fastener capable of securing supports in a tubular configuration, and Petitioner does not explain how that modification meets that aspect of the fasteners limitation without the premise that a POSITA would have been motivated to form a tubular configuration. See Pet. 34–35 (citing Ex. 1003 ¶¶ 86–88, 118). The cited declarant testimony repeats the same language from the Petition when addressing why modifying SoftHousing to include fasteners would have been obvious (i.e., the fasteners would have been obvious only when a POSITA already “wanted” to form the tubular configuration). See Ex. 1003 ¶ 118. Neither the Petition nor supporting declarant set forth a coherent argument that adding fasteners capable of securing a folded support in a tubular configuration would have been obvious merely by adding Velcro to the end panels of the honeycomb core in SoftHousing’s partitions.” slip op. at 25
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“4. Conclusion We find that Petitioner’s proposed modifications to and combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro do not disclose all of the limitations of independent claim 1. We find that we need not reach Patent Owner’s alleged objective indicia of nonobviousness arguments because even if Patent Owner submitted no such evidence or failed to establish a nexus or any persuasive objective indicia evidence, our conclusion as to the obviousness of claim 1 would not change. Based on the foregoing, we are not persuaded that Petitioner proved by a preponderance of the evidence that claim 1 of the ’366 patent is unpatentable as obvious based on the combination of SoftHousing I, SoftHousing II, SoftHousing III, Arens, and Velcro.” slip op. at 29
Patent outcomesUS 7,866,366 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,866,366 - Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.No claims unpatentablePTAB · Jul 5, 2023 · IPR2022-00327 · APJ Matthew S Meyers · IPR · Final written decision
Claims 15–17 and 22 were not shown unpatentable because the Pirovolou-based combinations did not establish the comparison required by limitation 15.3.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or petroleum engineering, or a closely related scientific field, and three-five years of work experience related to the design, performance, and control of components and systems used in oil and gas exploration and production, including downhole tools used in drilling applications. A lack of experience can be remedied with additional education, and vice versa. Pet. 7 (citing Ex. 1007 ¶¶ 37–41). Patent Owner does not provide its own assessment regarding the level of skill in the art or otherwise dispute Petitioner’s assertion in its Patent Owner Response. See generally PO Resp.; cf. Prelim. Resp. 29 (Patent Owner indicates that it “has adopted Petitioner’s articulation of the level of skill in the art.”). However, Patent Owner’s declarant, Dr. Hilbert, notes that he is familiar with Petitioner’s definition of the person of ordinary skill in the art, and opines that “the Petition’s articulation of the level of skill accurately reflects that of [one of ordinary skill in the art] with respect to the ’283 [p]atent.” Ex. 2010 ¶ 44 (citing Pet. 7). Based on this record, we apply Petitioner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After reviewing the full record, we determine that it is unnecessary to construe the term “estimated position of the drill bit in the formation,” to reach a determination in this proceeding. 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)). However, we address the parties’ dispute regarding the meaning of limitation [15.3], i.e., “comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole,” within our merits analysis below. See Pet. Reply 14–15; PO Sur-reply 16.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construes limitation [15.3] to require that “the comparison [be] performed on two positions ‘along a planned path of the borehole.’” Pet. Reply 14 (emphasis omitted). Petitioner’s proposed construction is inconsistent with the ’283 patent’s Specification and the language of limitation [15.3]. Figure 7C of the ’283 patent, reproduced below, is an illustration of “one embodiment of a convergence plan diagram with multiple convergence paths.” Ex. 1001, 1:56–57. Figure 7C illustrates “the estimated bit position is indicated by arrow 743 relative to the desired bit position 741 along the planned path 742.” Id. at 18:12–14.6 Contrary to Petitioner’s argument that limitation [15.3] “clearly recites that the comparison is performed on two positions ‘along a planned path of the borehole’” (Pet. Reply 14 (emphasis omitted)), we understand limitation [15.3] to recite that only one position, i.e., “a desired position,” is “along a planned path of the borehole.” See Ex. 1001, 36:12–14 (“comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole”).” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 2010 ¶ 95. We find to be credible Dr. Hilbert’s testimony that, if two points are both along a planned path, a comparison would not indicate whether the drill is outside a margin of error. We also credit Dr. Hilbert’s declaration testimony that the purpose of limitations 15.3 and 15.4 is to compare the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole and calculate more than one solution defining a path from the estimated position of the drill bit to the planned path if the drill bit is off course (i.e., outside a defined margin of error relative to the desired position). Id. ¶ 96. During his deposition, when asked whether “the step of comparing the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole is used to determine whether the bit is off course,” Dr. Schubert agreed. Ex. 2013, 73:17–22. Dr. Schubert also agreed that in order “to determine that [the bit]’s off path, you have to look at the planned path, not the projected trajectory.” Id. at 87:16–19. Based on the full record, we agree with Patent Owner that “both parties’ experts agree that the alleged comparison in Pirovolou—a comparison of two points on the same projected trajectory (i.e., a trajectory that has not yet been drilled)— will not be indicative of whether a correction is presently necessary.” PO Sur-reply 18 (citing Ex. 2010 ¶¶ 96–97; Ex. 2013, 73:17–22, 87:16–19). Therefore, Petitioner fails to establish that Pirovolou discloses or renders obvious the comparison recited by limitation [15.3] when read in context with limitation [15.4].” slip op. at 31
Patent outcomesUS 8,210,283 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,210,283 - Yantai Jereh Petroleum Equipment & Technologies Co., Ltd v. BJ Energy Solutions, LLCNo claims unpatentablePTAB · Feb 6, 2023 · PGR2021-00103 · APJ Patrick R Scanlon · PGR · Final written decision
Claims 1–28 were not shown unpatentable on any asserted ground; the Board found the prior art failed to establish key limitations and rejected the enablement and indefiniteness challenges.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In reply, Petitioner argues that the ’764 patent’s control system is not complex as there are no detailed algorithms, logic, or software. Pet. Reply 4. Instead, the control system merely raises or lowers power of the pumps in accordance with the demand HHP of the job design. Id. (citing Ex. 1036, 97:15–98:18, 98:21–99:25, 100:1–101:25, 102:2–7, 115:4–9, 115:24–116:4, 116:17–22; Ex. 1001, 5:2–6, 6:36–7:7, 10:4–64). According to Petitioner, this “rudimentary control concept” does not necessitate the higher skill level proposed by Patent Owner. Id. Petitioner further notes that Dr. Adnan testifies that “a mechanical engineer who has worked in the industry developing programming and control systems could fall within this definition,” and the person of ordinary skill in the art “is ‘just a specifier.’” Id. (quoting Ex. 2003 ¶ 22; Ex. 1036, 161:21–164:18). Based on our review of the record before us, particularly the ’764 patent’s description and Dr. Adnan’s testimony, we agree with Petitioner that the ordinary level of skill in the art does not require the high level of specialized knowledge of control systems suggested by Patent Owner. Moreover, we find that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we apply Petitioner’s definition, although our conclusions with respect to obviousness would be the same if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Based on the full record, we are not persuaded that Mr. Marscher is unqualified to serve as an expert in this proceeding. As noted above, a person of ordinary skill in the art is not required to have been a fracturing operator. Patent Owner’s proposed definition does not even require experience as a fracturing operator. See PO Resp. 20–21. Furthermore, Mr. Marscher testifies that he has extensive experience developing pumps for fracturing applications. Ex. 2027, 6:24–8:7. Mr. Marscher also testifies that he has experience with control systems relating to pumps and pumps units. Id. at 212:19–23. This testimony, as well as his declaration and curriculum vitae, show that Mr. Marscher has extensive education and experience in relevant fields. Ex. 1003 ¶¶ 8–17; Ex. 1004. Accordingly, we are not persuaded that Mr. Marscher’s qualifications or experience provide reason to discount the weight associated with Mr. Marscher’s testimony.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In its Reply, Petitioner argues that the maximum power output value is the pump unit’s highest HHP output and one of ordinary skill in the art would have understood this value is the pump unit’s output power in intermittent duty. Pet. Reply 2–3 (citing Ex. 1003 ¶¶ 71–72, 123–124; Pet. 9–10; Ex. 1036, 64:17–67:13, 119:17–120:11, 124:7–24, 198:9–200:9, 221:8–222:15). However, even if Petitioner is correct that the “maximum power output value” is near or equivalent to a pump unit’s output power in intermittent duty, we are still not persuaded that the term “maximum intermittent power” should be tied to the “maximum power output value,” in conflict with the definition provided in the Specification. Petitioner also argues that Patent Owner’s proposed construction is indefinite. Pet. Reply 3. For the reasons discussed below (see supra § II.I.1), we determine that Petitioner has not shown by a preponderance of the evidence that the term “maximum intermittent power,” as defined in the Specification, is indefinite. Thus, based on the complete record before us, we maintain our prior construction of “maximum intermittent power” for this Final Written Decision.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“3. Additional Terms We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes because doing so would have no effect on the analysis below. 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 13
Patent outcomesUS 10,815,764 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,815,764
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.