- Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentablePTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29
Patent outcomesUS 11,886,774 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,886,774 - Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.Some claims unpatentablePTAB · Sep 28, 2026 · IPR2025-00531 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–11 and 13–15 are unpatentable over the stated obviousness grounds; claim 12 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–15 of the ’698 patent. Discretionary denial of institution was determined to be not appropriate in this proceeding, and the proceeding was referred to the Board. Paper 10. Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–15 of the ’698 patent on all presented challenges. Paper 11 (“Inst. Dec.”), 15.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2025). For the reasons that follow, we determine that Shenzhen Tuozhu Technology Co., Ltd. (“Petitioner”) has shown by a preponderance of the evidence that claims 1–11 and 13–15, but not claim 12, of U.S. Patent No. 9,168,698 B2 (Ex. 1001, “the ’698 patent”) are unpatentable.” slip op. at 2
Patent outcomesUS 9,168,698 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,168,698 - Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision
Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy 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 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34
Patent outcomesUS 9,287,982 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,287,982 - Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedSome claims unpatentablePTAB · Dec 10, 2025 · IPR2024-00899 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–3, 5, 10, 11, and 14 are unpatentable as obvious; claims 4, 12, 13, and 15 were not shown unpatentable under the asserted § 103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(citing Ex. 1003 ¶ 22). Patent Owner does not contest this proposed level of ordinary skill. PO Resp. 5. Also, neither party argues that the precise level of ordinary skill would be dispositive in this proceeding. We adopt Petitioner’s proposed level of ordinary skill because it is undisputed, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’892 patent. See, e.g., Ex. 1001, 1:19–2:8.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We agree with Petitioner. The evidence of record, including the ’892 patent and its prosecution history,9 indicates that the ordinary and customary meaning of “transitioning . . . from . . . to” encompasses both direct and indirect transitions. Looking first to the claim language itself, the word “directly” appears in claims 1, 6, and 10, but not claim 14, presumptively suggesting that claim 14 was intended to more broadly capture systems with either direct or indirect transitions. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 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.”). Holding otherwise would fail to give any effect to the word “direct” as it appears in claims 1, 6, and 10. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions methodologies that render phrases in claims superfluous).” slip op. at 12
- Expert testimonyPetitioner expert creditedOther
“predictable and well-motivated variation of G.987.3, at the time of the claimed invention, to include a direct transition between the ONU’s two low-power states. See KSR v. Teleflex, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, . . . . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). We credit Dr. Sergienko’s testimony that a person of ordinary skill in the art would have been motivated to reduce power consumption and would have looked to ways of modifying G.987.3 to further that design goal. See Ex. 1003 ¶ 70; see also Ex. 1007, 97 (“For a variety of reasons, it is desirable to reduce the power consumed by an ONU as much as possible . . . .”). We also credit Dr. Sergienko’s testimony that there were only a small number of ways to modify the state transitions in G.987.3’s ONU, and that it would have been obvious to consider those possibilities. Ex. 1003 ¶ 70. Patent Owner does not contest this. Dr. Litvin concedes, for Patent Owner, that “there is no conceivable way the [ITU] did not consider the proposed transition” between the ONU’s two low-power states when drafting G.987.3, although he contends the standards body prohibited such direct transitions as “a conscious and reasoned design choice.” Ex. 2007 ¶ 108; see also id. ¶ 109 (opining that there were only four possible choices for transitions in the ONU, and the ITU “undoubtedly considered all of them, including the direct transition from . . . Listen and . . . Asleep”); PO Resp 24 (conceding that “G.987 explicitly considered the very direct transitions that Petitioner say would be used”). We also find persuasive Petitioner’s additional or alternative argument that Röger would have motivated modifying G.987.3 by allowing the ONU, while in sleep mode, to periodically turn on its receiver and check for messages from the OLT, which would have been direct transitions between “first” and “second” states as recited in claim 1. Pet. 20–22 & n.4; Ex. 1003 ¶¶ 82–84. The evidence suggests that modifying G.987 as Petitioner proposes would have been within the abilities of a person of the ordinary skill in the art at the time of the claimed invention—either to add a direct transition between Listen and Asleep states or to allow the ONU, while in its sleep (both transmitter and receiver off) mode, to periodically turn on its receiver temporarily to listen for polling messages from the OLT, as Röger teaches. Pet. 11–12, 14–15, 19; Ex. 1003 ¶¶ 70, 74. We also agree with Petitioner that there would have been motivation” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find persuasive Petitioner’s arguments that it would have been a predictable and well-motivated variation of G.987.3, at the time of the claimed invention, to include a direct transition between the ONU’s two low-power states. See KSR v. Teleflex, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, . . . . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). We credit Dr. Sergienko’s testimony that a person of ordinary skill in the art would have been motivated to reduce power consumption and would have looked to ways of modifying G.987.3 to further that design goal. See Ex. 1003 ¶ 70; see also Ex. 1007, 97 (“For a variety of reasons, it is desirable to reduce the power consumed by an ONU as much as possible . . . .”). We also credit Dr. Sergienko’s testimony that there were only a small number of ways to modify the state transitions in G.987.3’s ONU, and that it would have been obvious to consider those possibilities. Ex. 1003 ¶ 70. Patent Owner does not contest this. Dr. Litvin concedes, for Patent Owner, that “there is no conceivable way the [ITU] did not consider the proposed transition” between the ONU’s two low-power states when drafting G.987.3, although he contends the standards body prohibited such direct transitions as “a conscious and reasoned design choice.” Ex. 2007 ¶ 108; see also id. ¶ 109 (opining that there were only four possible choices for transitions in the ONU, and the ITU “undoubtedly considered all of them, including the direct transition from . . . Listen and . . . Asleep”); PO Resp 24 (conceding that “G.987 explicitly considered the very direct transitions that Petitioner say would be used”). We also find persuasive Petitioner’s additional or alternative argument that Röger would have motivated modifying G.987.3 by allowing the ONU, while in sleep mode, to periodically turn on its receiver and check for messages from the OLT, which would have been direct transitions between “first” and “second” states as recited in claim 1. Pet. 20–22 & n.4; Ex. 1003 ¶¶ 82–84. The evidence suggests that modifying G.987 as Petitioner proposes would have been within the abilities of a person of the ordinary skill in the art at the time of the claimed invention—either to add a direct transition between Listen and Asleep states or to allow the ONU, while in its sleep (both transmitter and receiver off) mode, to periodically turn on its receiver temporarily to listen for polling messages from the OLT, as Röger teaches. Pet. 11–12, 14–15, 19; Ex. 1003 ¶¶ 70, 74.” slip op. at 26
Patent outcomesUS 9,806,892 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,806,892 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - Hunter’S Manufacturing Company, Inc. D/B/A Tenpoint Crossbow Technologies v. Ravin Crossbows, LLCAll claims unpatentablePTAB · Jul 9, 2024 · IPR2023-00407 · APJ Robert J Silverman · IPR · Final written decision
Claim 1 is unpatentable as anticipated by Stanziale ’771; the Board did not reach the alternative grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As an initial matter, the recited expression “mounted to” is broad. The Federal Circuit has explained that words in a claim “will ordinarily be given their full meaning,” without imposing narrowing modifications on the claim language. Johnson Worldwide, 175 F.3d at 989, see also Virginia Panel, 133 F.3d at 865–66. As to whether the “mounted to” connection may be an indirect connection, the parties agree that an indirect connection is permitted — a view that is amply supported by the intrinsic record, as discussed above. With regard to the types of movement that may occur between a “string guide” and a corresponding “limb,” the intrinsic record shows that that various types of movements (including no movement at all) are characterized as “mounted to.” Slight variations of “mounted to,” occurring in the intrinsic record, are helpful in understanding the claim language — particularly because the ’015 patent itself uses such a variant (“mounted . . . on”) to describe the very connection (between a “string guide” and a “limb”) that is elsewhere, and in claim 1, is described as “mounted to.” See Ex. 1001, 5:23–26.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Patent Owner’ sole argument — i.e., that Stanziale ’771 fails to teach the “mounted to” limitation — is based upon its construction of the “mounted to” limitation, which permits the “string guide” to be rotatable relative the corresponding “limb,” but permits no other type of relative motion. See PO Resp. 4, 13–14. As discussed above, we do not accept Patent Owner’s construction of the “mounted to” limitation. In Stanziale ’771, first and second pulleys 145, 146, and interconnecting pivot 147 (all three of which Petitioner maps to claim 1’s “string guide[s]”) are pivotally connected to a number of intermediate members (e.g., lever arms or pushing arms 32, connecting elements 27, and constraining member 29) which are, in turn, pivotally connected to elastic members 10 (which Petitioner maps to claim 1’s “limb[s]”). See Pet. 41–42 (citing Ex. 1012 7:9–17, 8:26–8:13, 11:8–9, 14:18–15:22, 16:24–25, 16:29, 17:2, 17:15–17, 17:24–27, 19:12–30, 20:32–21:16, Figs. 1–7; Ex. 1016 ¶¶ 177–179); see also Ex. 1012 11:3–7, 11:34–12:4, 12:10–17, 16:29–18:3, 18:22–19:30, Figs. 8, 9, 10a, 10b. Therefore, Stanziale ’771, in Petitioner’s mapping, teaches the “string guide[s]” connected indirectly to the “limb[s].” Per the construction of the “mounted to” limitation employed herein (“connected to, either directly or indirectly”), Petitioner establishes, by a preponderance of the evidence, that Stanziale ’771 teaches the “string guide[s]” “mounted to” the “limb[s],” as recited in claim 1 of the ’015 patent. Contrary to Patent Owner’s concerns (see Paper 47, 1), the indirect connection between Stanziale ’771’s “string guide[s]” and “limb[s]” is not “unbounded.” Rather, the connection disclosed by Stanziale ’771 is the type of indirect connection supported by the intrinsic record. See supra § II.B. Patent Owner’s contention that “a POSA would be disinclined to rely on [Stanziale ’771] as a reference for the improved crossbow design disclosed in Claim 1” is not persuasive. See PO Resp. 38 (citing Ex. 2029 ¶ 46). The test for anticipation is whether a prior art reference discloses each and every element recited in the claim, not whether one of ordinary skill in the art would have been inclined to rely on the reference. See Net MoneyIN, Inc., 545 F.3d at 1369.” slip op. at 32
- ExcludeMotion to exclude, deniedMixed
“Motions to exclude evidence are authorized under 35 C.F.R. § 42.64. Rule 42.64(b)(1) states: “Once a trial has been instituted, any objection [to evidence] must be filed within five business days of service of evidence to which the objection is directed.” Further, “[t]he objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 35 C.F.R. § 42.64(b)(1). “A motion to exclude evidence must be filed to preserve any objection.” 35 C.F.R. § 42.64(c).” slip op. at 40
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In the present proceeding, Petitioner proposed — and Patent Owner does not dispute (see PO Resp. 3) — the following definition of a person of ordinary skill in the art: A hypothetical POSA to which the ’015 Patent pertains would be a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows. (Ex. 1016 ¶17.) Such a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows. (Id.) Pet. 28. As discussed above, we adopt Petitioner’s description of a person of ordinary skill for the purposes of this Decision. See supra § II.A. Petitioner alleges various deficiencies in Mr. Teater’s background, education, and knowledge. Paper 39, 4–8. Nevertheless, Mr. Teater satisfies the definition, of a person of ordinary skill in the art, that Petitioner advanced. Specifically, Mr. Teater has reviewed crossbows for 14 years, encompassing the relevant priority date for the ’015 patent, during which time he wrote evaluations of various bows and crossbows, developed and published testing standards for crossbows, and served on the Archery Trade Association’s technical committee for standards and guidelines. Paper 41, 4 (citing Ex. 2029 ¶¶ 3, 4, 7). Accordingly, Mr. Teater satisfies Petitioner’s definition of “a technical person who has at least some experience working in the field of archery, reviewing crossbows or engineering related to bows and/or crossbows, and is generally familiar with prior art crossbows.” Pet. 28. Petitioner emphasizes that Mr. Teater “does not have a degree in mechanical engineering.” Paper 39, 4 (citing Ex. 2034, 1; Ex. 1034, 43:20–44:5). However, no degree of any kind is mandatory for satisfying Petitioner’s definition of a person of ordinary skill in the art. Indeed, Petitioner’s definition states that “[s]uch a person would likely have at least a bachelor’s degree in mechanical engineering or, alternatively, would have several years of experience in the field of archery or engineering related to bows and/or crossbows.” Pet. 28 (emphasis added). There is no dispute that Mr. Teater meets this standard. Petitioner raises various other issues that form no part of the definition that Petitioner advanced — for example, whether Mr. Teater has taught courses related to crossbows, whether he is named as an inventor on a” slip op. at 36
Patent outcomesUS 9,354,015 unpatentableClaim construction§ 102 anticipationcites PhillipsPatents in suitUS 9,354,015 - Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentablePTAB · Jun 11, 2024 · IPR2023-01195 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; the remaining challenged claims were not shown unpatentable under the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘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.”).” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableUnpatentableMixed
“We agree with Patent Owner. Petitioner has not shown that any of the integrated circuits cited in the Petition would have been able to include the claimed acoustic model memory. Further, we find, contrary to Petitioner’s contention, that Patent Owner did not admit that procuring a processor and a memory capable of storing an acoustic model memory fabricated on an integrated circuit was within the level of ordinary skill. To the contrary, throughout the entire proceeding, Patent Owner has consistently argued that the claimed “calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” was unknown in the prior art. Petitioner has not shown that using the prior art elements relied on in the Petition according to their established functions would have resulted in “the calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” as recited in claim 1. In summary, Petitioner relies on Mozer to teach the benefits of fabricating a calculating apparatus and an acoustic model memory on the same integrated circuit, but Mozer does not teach a calculating apparatus and an acoustic model memory fabricated on the same integrated circuit. Further, the benefits of Mozer identified by Petitioner are benefits that both Mozer and Smyth already have, without fabricating the calculating apparatus and the acoustic model memory on the same integrated circuit. Also, even if Petitioner had shown there was a reason to combine Smyth and Mozer, Petitioner does not persuasively show that the combination teaches “the calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” as recited in claim 1. The Petition identifies only model memory for storing an acoustic model defining a plurality of acoustic states” as claimed, which is the one that “a POSITA would have been motivated . . . to fabricate” (Pet. 44), which was beyond the level of ordinary skill. We find that the Petition has not shown that claim 1 is unpatentable over Smyth and Mozer.” slip op. at 38
Patent outcomesUS 10,839,789 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,839,789 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; claims 1, 2, 4, 6–9, 11, 24, and 29 were not shown unpatentable, principally because the asserted combinations did not establish the claimed …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. We conclude that no terms require express construction to resolve a dispute. 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.’” (internal citation omitted)).” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In our Decision to Institute, we understood Petitioner’s theory based on the combination of Smyth and Mozer to include fabricating an integrated circuit in stating that we were sufficiently persuaded “that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory . . . was within the level of ordinary skill.” Dec. 23. Our understanding was based on the Petition’s multiple contentions that a person of ordinary skill would have found it obvious to fabricate Smyth’s processor and state memory on a single integrated circuit. See Pet. 41–44. For example, the Petition contends that “[a] POSITA would have found it obvious . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 41–42 (emphasis added)); “a POSITA would have understood and found obvious . . . to fabricate a calculating apparatus and acoustic model memory on a single integrated circuit” (Pet. 42 (emphasis added)); “[s]uch a use of a known technique of fabricating a memory and processor on a single integrated circuit” (id. (emphasis added)); “it would have been obvious to modify Smyth to form the classifier processor and associated memory on a single IC” (Pet. 43 (emphasis added)); (“it was well known in the prior art to fabricate a single integrated circuit” (Pet. 43–44 (emphasis added)); “[t]hus, a POSITA would have been motivated . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 44 (emphasis added)). integrated circuit to using integrated circuits that were already fabricated. Reply 22–25. According to Petitioner, “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a POSITA modifying Smyth according to Mozer’s undisputed teachings of a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Id. at 23–24. However, as discussed in the previous paragraph, when discussing the combination of a processor and an acoustic model memory on an integrated circuit, the Petition used the verb “to fabricate” four times in the future tense and once in the present tense, as well as the verb “to form” once in the future tense. The Petition did not use the past tense phrase “were already fabricated” as alleged in the Reply. Moreover, the Petition did not map Smyth’s state memory (which the Petition contends teaches the claimed “acoustic model memory” (see Pet. 11)) to a memory already fabricated on an integrated circuit in the prior art. Rather, the Petition relied on Mozer to support its contention that a person of ordinary skill would have fabricated the calculating apparatus and acoustic model memory of Smyth on an integrated circuit. See Pet. 42, 44. The Petition cited Boike and Ozcelik in contending that fabricating an integrated circuit with processors and memories was well known, and cited Toyoda in contending that fabricating an integrated circuit with a calculating apparatus and an acoustic model memory was well known. Pet. 43–44 (citing Ex. 1006; Ex. 1029; Ex. 1034). However, the Petition did not explain how a memory located in one of the integrated circuits of Mozer, Boike, Ozcelik, or Toyoda would have been able to store Smyth’s state memory. Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘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.”).” slip op. at 27
Patent outcomesUS 10,839,789 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,839,789 - PTAB · Oct 23, 2023 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted review of claims 7–11, 13, and 19–21 on all asserted grounds, finding a reasonable likelihood of prevailing for claims 11 and 13.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, institute inter partes review as to all of the challenged claims of the ’202 patent and all of the asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we are persuaded, on the present record, that both Petitioner’s and Patent Owner’s proposals are consistent with the problems Petitioner’s proposal is a better reflection of the level of skill in the prior art, and we therefore adopt it for this decision. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- BurdenMixed
“Figure 6 of Rauhala has been annotated by Patent Owner to show that the parallel connection (outlined in red) including resistors R1, R2. R3 and switches ka, kb is outside the signal path (highlighted in yellow) through differential amplifier 61. Prelim. Resp. 38. Petitioner identifies R1, R2, R3 and switches ka and kb as the claimed variable impedance. See, e.g., Pet. 39–41. The Petition (and the supporting Baker Declaration) do not explain adequately how, under this interpretation by Petitioner and its expert, Rauhala meets the adjusting an impedance “in the signal path” limitation. See Prelim. Resp. 39–41. For the reasons given, therefore, even if we were to disagree with Patent Owner’s construction of “impedance,” we agree with Patent Owner that Petitioner fails to demonstrate sufficiently that Rauhala meets the limitation in claims 7 and 19 requiring “dynamically adjusting one or more of an impedance . . . in the [receiver] signal path.” For the reasons given, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claims 11 and 13 as anticipated by Rauhala. We further determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to claims 7 and 19 as anticipated by Rauhala.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We disagree. Noting in the language of the claims requires that these method steps be performed by separate components, or that these method steps “provide two different channel indications at once” (Prelim. Resp. 38), only that they be performed as stated in the claim. In that respect, this case is distinguished from In re Robertson, where the Federal Circuit determined that the “third fastening means” required by the claims was not inherently disclosed by the prior art. Robertson, 169 F.3d at 745 (“The [prior art] patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”). In further contrast to this case, Robertson addressed mechanical elements of a product (fasteners for disposable diaper), not steps in a process. More pertinent to our facts is the Federal Circuit’s decision in Microsoft Corporation v. Uniloc, 2017 LLC, No. 2021- 2039, 2022 WL 11531235 (Fed. Cir. Oct. 20, 2022), that addresses steps in a method claim. Reversing the Board’s determination that a petitioner had 6 See Ex. 1001, 14:5–6 (claim 7), 14:41–42 (claim 11), 15:18–19 (claim 13), and 17:28–29 (claim 19). Circuit concluded that the Board had misconstrued the claims to require separate acts: We agree with [petitioner] that the Board misconstrued the claims to require that the comparing and determining step are performed by two separate acts in a certain order. Nothing in the intrinsic record requires such a narrow construction, and neither party presented this construction to the Board. Without any such evidence, we decline to impose such a narrow claim construction. Microsoft Corp., 2022 WL 11531235, at *3 (citation and footnote omitted). We find that at this stage, Petitioner has made a sufficient showing that this limitation is met by Rauhala. Pet. 31–33; Baker Decl. ¶¶ 111–114.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202
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.