- Clearcorrect Operating, LLC v. Align Technology Inc.No claims unpatentablePTAB · Sep 29, 2026 · IPR2025-00817 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–20 were not shown unpatentable because the cited combinations did not teach or suggest partial insertion of new scan data into an existing 3D model.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that Boerjes alone teaches or suggests limitation 1(h) by a preponderance of the evidence. Although the Petition is persuasive that Boerjes allows a user to “identify areas that need replacing, such as ‘a margin line’ to be removed, ‘areas of poor margin preparation,’ and ‘holes or areas of incomplete scan[s],’” and that the user can identify regions of a prepared tooth surface requiring additional preparations and “supplemental scanning” (Pet. 32 (citing Ex. 1004 ¶¶ 189, 193, 196)), Boerjes is silent with respect to replacing at least a portion of the removed surface portion of the model using the received second scan data of the patient’s teeth, per claim 1. Boerjes certainly contemplates the re-scanning of the dentition, but does not assert partial insertion of new data into an existing 3D model. We acknowledge that Petitioner has argued (Pet. 43–44) that Boerjes’ Figure 4 and paragraph 144 of Boerjes teach partial replacement, but we are persuaded that those disclosures suggest total replacement and not partial replacement. The reference to “supplemented or replaced with new scan data” (Ex. 1004 ¶ 199) does not necessarily teach or suggest partial scanning, as Petitioner has argued. Additionally, Petitioner has argued (Pet. “combining historical three-dimensional data” (quoting Ex. 1004 ¶¶ 139, 144, 163), would have suggested to ordinarily skilled artisans that “Boerjes would be used to replace at least a portion of the model with the new scan data. Id. at 45 (citing Ex. 1003 ¶ 112). These disclosures are, however, applicable to scans that create complete replacement as well as partial replacement. We remain persuaded that Boerjes does not teach partial scans used to obtain partial replacement. Even under the “comprising” language of claim 1, for example, the complete replacement of a 3D model cannot teach or suggest “replacing at least a portion of the removed surface portion” without repudiating the language of the claim by making a portion be the entire model. Even if, as Petitioner asserts, “removing portions of a virtual model has been a well-known and routine technique in 3D modeling,” and the “process of replacing a user-identified portion would have been well within the skills of a POSITA” (Pet. 35), the disclosure of Boerjes does not teach or suggest such processes. Although Boerjes allows for the possibility that portions of a model can be identified as needing replacement or supplementation, it does not disclose the partial replacement required by the instant, independent claims. Boerjes’s actual disclosure details that supplemental scanning is used to compensate for an inadequate scan, but such supplemental scanning is not disclosed to be used to stitch together before-and-after models that have undergone an intervening physical change.” slip op. at 15
Patent outcomesUS 10,791,936 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 10,791,936 - Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the complete record, we determine 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. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31
Patent outcomesUS 7,314,167 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,314,167 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.No claims unpatentablePTAB · Jan 23, 2026 · IPR2025-00748 · APJ Sean P O’Hanlon · IPR · Final written decision
Claim 15 was not shown unpatentable under § 103 over Gallagher and Lumia because Petitioner did not persuasively explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. As noted by Petitioner, Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 23. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we determine that no construction of any term is necessary. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not articulated persuasive reasoning for combining the teachings of Gallagher and Lumia. Petitioner argues that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels for countries that require a minimum retroreflectivity level for road markers. Pet. 46 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 49, 77; Ex. 1019, 6, 8–11).7 However, Gallagher already discloses determining whether the 7 Petitioner and Dr. Thorpe cite to the original pagination of Exhibit 1019 rather than the added exhibit pagination. reflectance level of each road marker meets a predetermined minimum acceptable reflectance level and tagging those road markers that do not meet the minimum acceptable reflectance level to identify them for replacement. See, e.g., Ex. 1005 ¶¶ 3, 67–68; see also id. ¶¶ 12–13, 18, 21, 49, 51, 76, 79, Fig. 5. Indeed, both Petitioner and Dr. Thorpe describe Gallagher’s system as ensuring that road markers meet minimum retroreflectivity standards: “Gallagher’s apparatus tests ‘road markings and road markers such as, for example, road signs and posts, reflective painted lines whether continuous or broken, and . . . raised pavement markers’ ‘to ensure they continue to meet minimum standards of reflectivity/retroreflectivity.’” Pet. 9 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33); Ex. 1003 ¶ 55 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33). Thus, we agree with Patent Owner that Petitioner has not identified persuasively why an ordinarily skilled artisan would have modified Gallagher’s system to include Lumia’s process for measuring retroreflectivity of traffic signs.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“coefficient of luminous intensity rather than the coefficient of retroreflectivity, and Lumia teaches how to calculate retroreflectivity based on the coefficient of luminance intensity. Pet. Reply 20–21. During the hearing, counsel for Petitioner clarified that this reliance on Lumia entails using the equations disclosed in Lumia without altering Gallagher’s hardware. Tr. 27:18–29:24. During his deposition , Dr. Thorpe confirmed that this obviousness theory relies only on Lumia’s equations. See Ex. 2025, 60:5–65:2. This is an improper new argument. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”). Notably, this new obviousness theory appears to stem from Patent Owner’s witness, Dr. Papanikolopoulos, noting differences in Gallagher’s and Lumia’s disclosures. See Pet. Reply 21 (citing Ex. 2023 ¶¶ 71 n.2, 89). Even considering Petitioner’s new theory, we find it unpersuasive because Petitioner does not explain adequately how the “determining a luminance value” recitation is met. Per Petitioner, Gallagher measures the coefficient of luminous intensity, but Petitioner does not identify a “luminance value” as recited in claim 15. Dr. Papanikolopoulos testifies that the coefficient of luminous intensity is not a luminance value: “As is well established, coefficient of luminous intensity—which is what Gallagher calculates—is a measurement of retroreflectivity (usually expressed in units of candelas, or millicandelas, per lux per square meter, i.e., cd/lx/m2), not luminance (usually expressed in candelas per square meter, i.e., cd/m2). Ex. 2023 ¶ 91. Petitioner’s witness, Dr. Thorpe, does not contest this testimony. See, e.g., Ex. 1030 ¶ 35. Thus, Petitioner’s new theory is unpersuasive.” slip op. at 20
Patent outcomesUS 9,335,255 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,335,255 - Mobileye Global, Inc. / ZF Active Safety And Electronics US LLC v. Facet Technology Corp.No claims unpatentablePTAB · Jan 23, 2026 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Final written decision
Claim 15 was not shown unpatentable under § 103 over Gallagher and Lumia because Petitioner did not persuasively explain why a skilled artisan would combine their teachings.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties disagree only on the length of experience an ordinarily skilled artisan would have, with Petitioner contending four years and Patent Owner contending two years. As noted by Petitioner, Patent Owner’s witness, Dr. Papanikolopoulos, does not provide an explanation for his opinion or support his definition of the level of ordinary skill with citations to evidence. See Ex. 2023 ¶ 57 (“In my opinion, [Petitioner’s definition] is an excessive level of ordinary skill in the art, and I believe instead [an ordinarily skilled artisan] would more likely have two years of experience rather than four years.”). On the other hand, Petitioner’s witness, Dr. Thorpe, does provide an explanation for his opinion, explaining that his assertion that four years of experience is required is based on the state of the art, typical undergraduate curricula, and his supervision of doctoral students. Ex. 1030 ¶ 23. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own. We note that we would reach the same conclusions under either proposed standard.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this Decision, we determine that no construction of any term is necessary. slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not articulated persuasive reasoning for combining the teachings of Gallagher and Lumia. Petitioner argues that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels for countries that require a minimum retroreflectivity level for road markers. Pet. 46 (citing Ex. 1003 ¶ 116; Ex. 1005 ¶¶ 49, 77; Ex. 1019, 6, 8–11).7 However, Gallagher already discloses determining whether the 7 Petitioner and Dr. Thorpe cite to the original pagination of Exhibit 1019 rather than the added exhibit pagination. reflectance level of each road marker meets a predetermined minimum acceptable reflectance level and tagging those road markers that do not meet the minimum acceptable reflectance level to identify them for replacement. See, e.g., Ex. 1005 ¶¶ 3, 67–68; see also id. ¶¶ 12–13, 18, 21, 49, 51, 76, 79, Fig. 5. Indeed, both Petitioner and Dr. Thorpe describe Gallagher’s system as ensuring that road markers meet minimum retroreflectivity standards: “Gallagher’s apparatus tests ‘road markings and road markers such as, for example, road signs and posts, reflective painted lines whether continuous or broken, and . . . raised pavement markers’ ‘to ensure they continue to meet minimum standards of reflectivity/retroreflectivity.’” Pet. 9 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33); Ex. 1003 ¶ 55 (alteration in original) (emphasis added) (citing Ex. 1005 ¶¶ 3, 6, 31–33). Thus, we agree with Patent Owner that Petitioner has not identified persuasively why an ordinarily skilled artisan would have modified Gallagher’s system to include Lumia’s process for measuring retroreflectivity of traffic signs.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“coefficient of luminous intensity rather than the coefficient of retroreflectivity, and Lumia teaches how to calculate retroreflectivity based on the coefficient of luminance intensity. Pet. Reply 20–21. During the hearing, counsel for Petitioner clarified that this reliance on Lumia entails using the equations disclosed in Lumia without altering Gallagher’s hardware. Tr. 27:18–29:24. During his deposition , Dr. Thorpe confirmed that this obviousness theory relies only on Lumia’s equations. See Ex. 2025, 60:5–65:2. This is an improper new argument. See, e.g., Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (“[A]n IPR petitioner may not raise in reply ‘an entirely new rationale’ for why a claim would have been obvious.”). Notably, this new obviousness theory appears to stem from Patent Owner’s witness, Dr. Papanikolopoulos, noting differences in Gallagher’s and Lumia’s disclosures. See Pet. Reply 21 (citing Ex. 2023 ¶¶ 71 n.2, 89).” slip op. at 20
Patent outcomesUS 9,335,255 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,335,255 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31
Patent outcomesUS 10,129,825 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,825 - Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentablePTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.
RulingsFinal written decision- 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 were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12
- Expert testimonyPetitioner expert discountedDecided for patent owner
“85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17
Patent outcomesUS 10,524,202 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,524,202 - Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentablePTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDecided for patent owner
“construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39
Patent outcomesUS 10,713,366 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,366 - Intuit Inc. v. Samesurf, Inc.No claims unpatentablePTAB · Jun 25, 2024 · IPR2023-00341 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1–16 were not shown unpatentable over Lebrun and Wang or over Prajapat and Wang because the combinations did not teach key invitation and webpage retrieval limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, 7 Patent Owner has not offered objective evidence of non-obviousness. See generally PO Resp.; PO Sur-reply; see also Pet. 21 (indicating Petitioner is not aware of any evidence of secondary considerations). least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 12; see Dec. 10–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 37. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Strike new argumentNew argument disregardedGranted in part
“surfing server as forwarding the session-creation message to the invited web client. PO Sur-reply 12. Although Lebrun describes the group-surfing server as “informing the participants in the group-surfing server session” after receiving the session-creation message and creating the group-surfing session, Lebrun does not describe forwarding or otherwise sending the session-creation message to the participants. Ex. 1005, 32:26–28, 44:12–14. Petitioner’s citations in this regard to Dr. Lieberman’s declaration do not adequately support Petitioner’s “forwarding” contention. Pet. Reply 8 (citing Ex. 1003 ¶¶ 37, 149); Ex. 1003 ¶ 37 (indicating the challenged patent describes the invitation as being sent by email, instant message, or social network communication); Ex. 1003 ¶ 149 (describing the group-surfing server receiving the session-creation message, creating the group-surfing session, and “inform[ing] the participants in the group-surfing session”). Petitioner does not identify any testimony from Dr. Lieberman that supports Petitioner’s Reply position that Lebrun’s group-surfing server “forwards” the session-creation message to the group-surfing session participants, nor are we aware of any such testimony. See, e.g., Ex. 1003 ¶ 149 (The group-surfing server “responds to the group session request ‘by (1) creating a group-surfing session, and (2) informing the participants [web clients] in the group-surfing session.”); see generally Ex. 1034. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“receive webpage content from the website server in particular ways as identified in limitations [1e] and [1g]. Similarly, claim 1 requires the invitee device to retrieve data from the website server in response to receiving “the information related to the shared web browsing interaction from the synchronization server” (limitation [1f.iii]). For the reasons discussed above, Petitioner has not shown by a preponderance of the evidence its combination of Lebrun and Wang does so. For the required website server interaction, in its Petition, Petitioner relies on Lebrun’s description of an alternative embodiment applicable only when no cookies or other identity information are involved (Ex. 1005, 35:17–19). See, e.g., Pet. 30 (citing Ex. 1005, 35:17–19). As Patent Owner indicates, this alternative is not relevant to the subject matter recited in claim 1 which requires identity information. PO Resp. 45. Petitioner does not address this shortcoming in its Reply. See generally Pet. Reply. Rather, in its Reply, for website server interaction, Petitioner relies on Lebrun’s functionality of sending a web page from the web server to the web client as shown in Lebrun’s Figure 1. See, e.g., Pet. Reply 11 (citing Ex. 1005, 32:21–24, 31:27–30, Fig. 1). Specifically, Petitioner contends that Lebrun discloses that (i) a URL for the initial web page is included in session-creation message 151 (Ex. 1005, 32:21–24), (ii) the web site sends a web page directly to the web client (Fig. 1), and (iii) the web site delivers information 132 to web clients or the group-surfing server 140 “in response Pet. Reply 11. Although this shows the web site sending a web page directly to a web client, the prior art of Lebrun does not do so in the manner required by the claims (limitations [1e], [1f.i], [1f.iii], [1g]).” slip op. at 46
Patent outcomesUS 9,483,448 not shown unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,483,448 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedNo claims unpatentablePTAB · Jun 11, 2024 · IPR2023-01197 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–8 were not shown unpatentable because the Petition did not explain how the Jiang and Chen combination met limitations 1(d) and 1(e), or establish motivation to combine.
RulingsFinal written decision- BurdenNot shown unpatentable
“algorithm on Chen’s plurality of clusters of processors, the Petition contends that Jiang alone teaches limitations 1(d) and 1(e) in disclosing assigning an initial score to each of the initial nodes of a prefix tree, then using these initial scores to determine, via pruning, whether to continue processing branches connected to the nodes. Pet. 38 (citing Ex. 1004, 8–64); see id. at 31–44. We agree with Patent Owner that the Petition does not explain how Jiang’s pruning would be implemented in Chen’s multiple clusters of processors to generate an initial score for an audio sample, and to use the initial score “to determine whether to continue processing” as required by limitations 1(d) and 1(e). In contending that Jiang alone teaches limitations 1(d) and 1(e), the Petition quotes from Jiang’s description of its pruning technique: scores assigned to that node with the largest score on any of the other nodes corresponding to the frame being considered. If the score at a particular node is sufficiently low compared to the maximum score for other corresponding nodes in tree 77, it is assumed that the branches leading to the node under consideration (the node with the lower score) will not likely be part of the completed most likely phoneme sequence (i.e., the phonemes in that sequence will not likely be part of the final word recognized by the system). Thus, that branch is dropped (or pruned) from tree 77 and is no longer considered in further processing. Pet. 38–39 (quoting Ex. 1004, 8:52–64) (emphasis in original). Petitioner concludes that “[p]er Mr. Schmandt, Jiang thus teaches an initial score . . . used to determine whether to continue processing to determine a final score . . . . Dec., 90–91. As such, Jiang teaches claim 1(e).” Pet. 43–44. The Petition explains how Jiang’s pruning algorithm generates an initial score and uses the initial score to prune, or “determine whether to continue processing” as recited in claim 1, but does not explain how Jiang’s pruning algorithm would be implemented on Chen’s four clusters of processors shown in Figure 4, as required by the Petition. That is, the Petition does not explain how each of the processors in the four clusters of Chen, after generating a score for one of the initial nodes, would compare the score with the maximum score of all corresponding initial nodes in tree 77. In fact, the Petition, in relying on Jiang alone to teach this limitation, does not even contend that Jiang’s pruning technique would be performed by any of Chen’s clusters of processors, let alone explain how pruning would have been performed by Chen’s parallel processing computer system.” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“Patent Owner contends that Petitioner’s Reply theory was not set forth in the Petition, and is therefore untimely. PO Sur-Reply 4. We agree with Patent Owner. The Petition relies on Jiang alone to teach limitations 1(d) and 1(e), as discussed above. Petitioner’s contention that Jiang’s algorithm would have been replicated across Chen’s processors for performing limitations 1(d) and 1(e) is not found in the Petition. Rather, as discussed above, the Petition describes how Jiang’s algorithm would have been replicated for performing limitations 1(a), 1(b), and 1(c). Petitioner’s new theory in Reply is untimely. A “[p]etitioner 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.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) 73;2 see also Intelligent Bio- 2 Available at www.uspto.gov/TrialPracticeGuideConsolidated. 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. e-Watch, 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.”). Petitioner contends that Mr. Schmandt explained during his deposition that, even though paragraphs 83–87 of his Declaration do not mention Chen, other parts of his Declaration explain how the combination of Jiang and Chen would have operated. Reply 2 (citing Ex. 2017, 44:2–11, 45:10– 46:10, 71:6–23, 73:12–17, 79:11–23, 81:8–22, 83:15–18, 86:25–87:23, 93:7–94:10, 94:16–23, 95:19–96:10, 97:8–17, 99:17–102:12). We disagree. During his deposition, Mr. Schmandt did not identify where his Declaration explains how the combination of Jiang and Chen teaches the limitations of claim 1(d) and 1(e). Neither Petitioner nor Mr. Schmandt identifies any paragraph of Mr. Schmandt’s Declaration that explains how the processors in Chen’s cluster of processors would have performed Jiang’s pruning technique in order to meet limitations 1(d) and 1(e). Rather, both the Petition and Mr. Schmandt’s Declaration rely on Jiang alone to teach limitations 1(d) and 1(e). See Pet. 38–44; Ex. 1003 ¶¶ 84–91; Ex. 2017, 68:17–25, 79:11–23, 81:8–22, 83:10–18.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We disagree with Petitioner’s contention that to perform speech recognition, the processors in each cluster would not need to access the memories of the other clusters. See Reply 26. Petitioner’s contention is inconsistent with Petitioner’s contention that “[o]nce the cumulative probability score is calculated, inter-cluster processing of the results for each tree search would be communicated.” Reply 4; see id. at 16. Petitioner’s contention is inconsistent with the intrinsic evidence, which discloses that parallel implementation of a search algorithm for speech recognition requires a significant amount of communication and synchronization. Ex. 1001, 1:47–52. Petitioner’s contention is inconsistent with Mr. Schmandt’s testimony that if we’re going to be doing pruning based on thresholds, then we have to know the scores that we got on each of the trees, so I think that’s a safe assumption, that that’s in there. So when each of the processors has performed its task on its set of trees, it can produce a set of numbers, and looking at the numbers across all of the processors, across all of the results, we can choose a pruning threshold just like Jiang chooses a pruning threshold after it performs all these operations in serial as opposed to parallel. inconsistent with Jiang’s teaching that pruning is performed by comparing a score at a particular node to the maximum score for other corresponding nodes in the prefix tree. Ex. 1004, 8:55–64. We rely on Dr. Anderson’s testimony, that a parallel implementation of Jiang’s algorithm “requires extensive communication between computational components” and that “all four memories 104(a)-(d) would contain necessary information” to perform limitations 1(d) and 1(e), in finding that performing Jiang’s algorithm using Chen’s clusters of processors would have required the processors to access data in all of the cluster memories 104a-d in order to determine the scores of the corresponding nodes of the tree. Ex. 2020 ¶¶ 29, 51. We disagree with Petitioner’s contention that performing Jiang’s algorithm using the processors of Chen would have resulted in the benefit of an increase in speed. Pet. 10. We credit Dr. Anderson’s testimony that Mr. Schmandt’s assumptions that the clustered processor and memory arrangement of Chen would have necessarily improved the speed and power of Jiang’s speech recognition are incorrect. Ex. 2020 ¶¶ 35 (citing Ex. 1003 ¶¶ 67, 74), 36 (citing Ex. 2021, 11). Petitioner contends that Dr. Anderson’s testimony is conclusory and that Patent Owner does not provide evidence other than Mathew I to support its contention that the combination would have a high synchronization overhead. Reply 20–21. We disagree, and find that Dr. Anderson’s testimony is sufficiently supported by evidence, including Jiang, Chen, and Mr. Schmandt’s Declaration. For example, Dr. Anderson testifies that the Viterbi algorithm compares most likely outcomes from the previous frame. Ex. 2020 ¶ 29 (citing Ex. 1004, 1:19–39, 2:1–26). Dr. Anderson testifies that to perform these comparisons requires extensive communication between computational components that can have a drastic impact on system performance. Id. ¶¶ 29, 43. Dr. Anderson testifies that as a result, performing Viterbi decoding when the information needed may be in a cluster that is not directly accessible, as in Chen, is not likely to be successful in a practical speech recognition system. Id. (citing Ex. 1003 ¶ 95; Ex. 1005, 9:10–39); see id. ¶ 43. Thus, Dr. Anderson further supports his testimony with citations to Jiang, Chen, and Mr. Schmandt’s Declaration. In addition, Mr. Schmandt does not support with objective evidence his testimony that using Chen’s clusters of processors would have increased the computing power for implementing Jiang’s speech recognition techniques to desirably result in improved processing speed and power. See Ex. 1003 ¶¶ 67, 74. Although Mr. Schmandt mentions Hon (Ex. 1006), Tremblay (Ex. 1027), Erman (Ex. 1025), Wulf (Ex. 1024), Garde (Ex. 1028), and Deo (Ex. 1026) in his testimony, Mr. Schmandt does not persuasively explain how these background references would have taught a person of ordinary skill in the art that Chen’s parallel processing computer system, which includes an extended shared memory model and a distributed memory model, would have increased the speed of Jiang’s speech recognition algorithm over Jiang’s shared memory model.” slip op. at 31
Patent outcomesUS 10,971,140 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,971,140 - Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedNo claims unpatentablePTAB · Jun 11, 2024 · IPR2023-00037 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–8 were not shown unpatentable because Petitioner did not establish that the asserted combinations taught the claimed limitations or provide a persuasive reason to combine Jiang and Chen.
RulingsFinal written decision- BurdenNot shown unpatentable
“algorithm on Chen’s plurality of clusters of processors, the Petition contends that Jiang alone teaches limitations 1(d) and 1(e) in disclosing assigning an initial score to each of the initial nodes of a prefix tree, then using these initial scores to determine, via pruning, whether to continue processing branches connected to the nodes. Pet. 38 (citing Ex. 1004, 8–64); see id. at 31–44. We agree with Patent Owner that the Petition does not explain how Jiang’s pruning would be implemented in Chen’s multiple clusters of processors to generate an initial score for an audio sample, and to use the initial score “to determine whether to continue processing” as required by limitations 1(d) and 1(e). In contending that Jiang alone teaches limitations 1(d) and 1(e), the Petition quotes from Jiang’s description of its pruning technique:” slip op. at 20
- Strike new argumentNew argument disregardedDecided for patent owner
“in the Petition, and is therefore untimely. PO Sur-Reply 4. We agree with Patent Owner. The Petition relies on Jiang alone to teach limitations 1(d) and 1(e), as discussed above. Petitioner’s contention that Jiang’s algorithm would have been replicated across Chen’s processors for performing limitations 1(d) and 1(e) is not found in the Petition. Rather, as discussed above, the Petition describes how Jiang’s algorithm would have been replicated for performing limitations 1(a), 1(b), and 1(c). Petitioner’s new theory in Reply is untimely. A “[p]etitioner 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.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) 73;2 see also Intelligent Bio-” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“inconsistent with Jiang’s teaching that pruning is performed by comparing a score at a particular node to the maximum score for other corresponding nodes in the prefix tree. Ex. 1004, 8:55–64. We rely on Dr. Anderson’s testimony, that a parallel implementation of Jiang’s algorithm “requires extensive communication between computational components” and that “all four memories 104(a)-(d) would contain necessary information” to perform limitations 1(d) and 1(e), in finding that performing Jiang’s algorithm using Chen’s clusters of processors would have required the processors to access data in all of the cluster memories 104a-d in order to determine the scores of the corresponding nodes of the tree. Ex. 2020 ¶¶ 29, 51.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“We do not need to resolve this dispute, because even under Petitioner’s definition of the level of ordinary skill, Petitioner has not shown that the challenged claims are unpatentable. We apply Petitioner’s definition that a person having ordinary skill in the art 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, and that additional education or experience might substitute for the above requirements.” slip op. at 9
Patent outcomesUS 10,971,140 not shown unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,971,140
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.