• Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, 4–7, and 9–14 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Inoue–Smith obviousness rationale was insufficient.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) if in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We do not agree with Petitioner that the fact pattern before us is analogous to Rembrandt. The rationale to combine the teachings of Inoue and Smith provided in the Petition focuses on replacing incandescent bulbs with LEDs, and includes the generic statement that “[t]he numerous record-supported advantages, set forth in Smith provide a clear motivation for use of the teachings of Smith as applied to Inoue, so as to enjoy the advantages set forth in Smith.” Pet. 47. The testimony in Dr. Schubert’s Declaration at pages 99–100 cited in support of Petitioner’s Reply arguments was not cited or otherwise referenced in the Petition. See Pet. 46–55. We find that the Petitioner’s Reply is not responsive to the Institution Decision and is improper because it presents a new rationale to combine the teachings of Inoue and Smith that was not expressed in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Petitioner could have presented its rationale to make out a prima facie case of unpatentability in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Accordingly, we do not consider Petitioner’s new rationale to combine the teachings of Inoue and Smith presented for the first time in the Reply. Based on the entire record, but not including Petitioner’s new rationale and newly cited support to Smith and Dr. Schubert’s testimony (Exs. 1013, 1017) presented for the first time in the Reply, we are not persuaded that Petitioner sets forth in the Petition sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify the circuit of Inoue to include a light source or LED light source with a twinkling or flashing effect in view of Smith’s teachings. See Pet. 46–47, 49–50, 51–53, 55. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of independent claim 9 and dependent claims 3, 5, and 6 would have been obvious over the teachings of Inoue and Smith.” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Based on Petitioner’s citations to Holler, Inoue, and Dr. Schubert’s testimony (Ex. 1013), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to “use the resistive value as taught by Holler in the circuit of Inoue to control the illumination of the light sources so that the other illumination devices in the serial light string will not go dark or change illumination if one of the LEDs fails or becomes disconnected.” Pet. 27; see KSR, 550 U.S. at 418. Based on the entire record and including the reasons explained above in Section II.D.2. addressing anticipation of claim 1 by Inoue, we determine Petitioner shows by a preponderance of the evidence that the subject matter of claims 1 and 10 would have been obvious over Inoue and Holler. See Pet. 26–32.” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner

    “We observe that, aside from Declaration testimony of Mr. Altamura and accompanying exhibits, Patent Owner does not offer any additional evidence to establish reduction to practice. An inventor’s testimonial assertion of inventive facts requires corroboration by independent evidence. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). The purpose of the corroboration requirement is to prevent fraud, by providing independent confirmation of the inventor’s testimony. Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997). Without the requirement of independent corroboration, there would be a great temptation to commit perjury and the adverse party would be effectively precluded from a successful rebuttal. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). A rule of reason applies to determining whether the inventor’s testimony has been corroborated. See id. at 1195. “The rule of reason, however, does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). Accordingly, based on the entire record, we find that Mr. Altamura’s Declaration testimony is uncorroborated. Yu is prior art to the ’252 Patent because Patent Owner is unable to establish actual reduction to practice earlier than the July 31, 2006, filing date of Yu.” slip op. at 51

  Patent outcomesUS 11,096,252 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,096,252
• Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01259 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1, 2, 4–7, and 9–15 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Petition lacked a sufficient motivation to combine Inoue and Smith.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’794 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 7–9. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation “conducting current at all times across the light sources when current is flowing through the circuit regardless of whether the LED light source are conducting current therethrough,” functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7

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

    “We understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. Neither party disputes our understanding of the term “inherent resistance.” See Dec. on Inst. 9–10; PO Resp. 7–9; Pet. Reply.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 31 ¶ 3; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See PO Resp. 2. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’794 Patent Specification and the asserted prior art.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We do not agree with Patent Owner’s arguments because, as explained above in Section II.A., we decline to import functional language into the claim from the Specification to construe the preamble recitation as requiring the function of “continu[ing] to conduct electricity and keeps the remaining lights lit, even when one more individual lighting elements in the series are out, loose, broken, missing/removed, or defective.” Having considered both parties’ arguments and corresponding cited supporting evidence, we are persuaded that Inoue discloses each of the limitations of claim 1. Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that claim 1 is anticipated by Inoue. See Pet. 25–26.” slip op. at 14

  Patent outcomesUS 11,533,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,533,794
• Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11

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

    “We determine that no construction of “virtual timeline” is necessary. See, e.g., 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))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34

  Patent outcomesUS 11,991,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,991,234
• Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44

  Patent outcomesUS 10,806,124 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,806,124
• Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20

  Patent outcomesUS 8,605,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,605,794
• ROKU, Inc. v. Universal Electronics, Inc.Some claims unpatentable
  PTAB · Nov 28, 2023 · IPR2022-00943 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–7, 9–13, 15, and 16 are unpatentable as obvious; claims 8 and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that: On or before 7/12/2017, [one of ordinary skill in the art] would have had a bachelor’s degree in computer science, in electrical engineering, or a related field, and approximately three years of experience or equivalent study in voice-controlled devices in smart home systems. Additional graduate education could 2 Neither party presents arguments or evidence relating to such objective evidence of nonobviousness. in the field could substitute for formal education. Pet. 18. We adopted this definition for the purposes of the Decision on Institution. Dec. on Inst. 8–9. Patent Owner adopts Petitioner’s definition. PO Resp. 4. We again adopt Petitioner’s definition, which is consistent with the level of skill as reflected in the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “Absent a recitation of order, or an order mandated by grammar or logic, the steps of a method claim are not construed to require a particular order. See, e.g., Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Patent Owner argues that the steps of claim 1, a method claim, must be performed in sequential order. PO Resp. 13–16. Without commenting on or conceding Patent Owner’s proposal, Petitioner contends that “the trial grounds meet this proposed construction.” Pet. Reply 24–25; Tr. 8:25–11:16. Our record does not reflect any indication that Patent Owner’s proposed construction requiring the sequential ordering of the method steps is not at least encompassed by the correct construction of claim 1. Because of this, and because Petitioner agrees that the arguments in the Petition meet this construction, we accept Patent Owner’s construction as correct for the purposes of this Decision.” slip op. at 10

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We do not agree with Patent Owner that Petitioner’s showing uses the same sound data to teach the “first sound data” of limitation 1.a and the “second sound data” of limitation 1.c. Patent Owner is correct that Rosenberg’s claim 5 describes the determination of a volume threshold based on the volume of the ambient audio signal in which characteristic form(s) (e.g., the name of the user of the media player) are present. Ex. 1006, 13:66–21, 14:28–30. However, the Petition describes using Fu’s “predetermined threshold” in combination with Hart-787’s device, which attenuates audio output of a device upon detecting a user’s utterance intended to gain the attention of the device, in order to “include adjusting the audio output volume of a wirelessly-linked audio-producing device when the voice-controlled device determines that the ambient noise level at the time a Ex. 1004, 2:22–37, 5:61–6:10, 9:18–25; Ex. 1005 ¶¶ 24, 32, 54; Ex. 1003 ¶¶ 88–89). Petitioner further proposes including a threshold that is advantageously based on the environment in which the device is operating as described in Fu, for example to respond to differing levels of noise at different times of day. Id. at 26, 29–30, 40 (citing Ex. 1006, 10:42–67, 14:28–30; Ex. 1003 ¶¶ 48–53, 55, 58, 87, 91, 107–109). We agree with Petitioner that Patent Owner’s arguments address the references individually instead of addressing the combination of the teachings proposed in the Petition. See Pet. Reply 8, 13–14; see also Dec. on Inst. 21–22, 23–24, 25–26. The Petition relies upon a combination of elements of Hart-787 with the predetermined threshold as taught in Fu and with establishing such a threshold based on the operating environment of a device as in Rosenberg. Pet. 26–31, 34–41. Patent Owner is correct that Rosenberg’s threshold is set at the time of the utterance in Rosenberg’s claim 5 and cites Petitioner’s declarant as “conceding” issues regarding how “Rosenberg’s volume threshold is determined.” PO Resp. 20–21. But this argument and the ostensible concession do not squarely address the proposed combination, which combines Fu’s teaching of an adjustment unit that “compares the volume of the ambient noise received . . . to a predetermined threshold” with Rosenberg’s teaching that such “a threshold may be ‘determined based on the volume of [an] ambient audio signal.’” Pet. 39, 40 (emphasis omitted) (quoting Ex. 1006, 14:28–30). While Patent Owner argues that “Petitioner has not proposed using a predetermined/pre-set threshold or a previously established threshold based on environmental noise in the combination of Hart-787 with F[u] and Rosenberg” (PO Resp. 46), we find, on the contrary, that the Petition describes a combination based predetermined threshold” and on a threshold “determined according to an environmental noise level.” Pet. 29–30. Thus, we find Petitioner’s unpatentability grounds do not suffer from the issues Patent Owner argues are a consequence of the purported use of the same sound data for the “first sound data” of claim limitation 1.a and for the “second sound data” of claim limitation 1.c. We do not agree with Patent Owner’s arguments regarding Fu’s teachings with respect to limitation 1.e’s “transition from a first state having a first volume level to a second state having a second volume level that is less than the first volume level” because these arguments similarly do not address the proposed combination. See PO Resp. 26–30. The Petition cites Hart-787 for attenuating the volume of an audio-producing device when a wake word is issued. Pet. 32–34, 43–44. The Petition cites Fu for adjusting volume of an audio-producing device if the level of ambient noise exceeds a predetermined threshold. Id. at 36–39, 44–45. Thus, even if Fu teaches only increasing the volume of an audio-producing device if the predetermined threshold is exceeded, the Petition relies on the combination of teachings of Hart-787 and Fu, and Patent Owner’s argument that neither reference teaches “decreasing a controllable appliance’s volume output when a previously established volume threshold is exceeded” (PO Resp. 30) does not address the combination proposed. Patent Owner’s argument that “Petitioner has not proposed modifying Fu to decrease a controllable appliance’s volume output when a volume threshold is exceeded” (PO Resp. 30) similarly does not address the combination proposed in the Petition. We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We also find that the preponderance of the evidence supports Petitioner’s showing regarding the motivation to combine the references. transmitted volume down control signals as the means for attenuating audio output, Petitioner contends that Hart-787 “broadly teaches” that a device transmits control command signals to the audio-producing device, relying on the testimony of its declarant. See Pet. 23 (citing Ex. 1004, 5:47–51; Ex. 1003 ¶ 82), 43–44 (citing Ex. 1004, 1:67–2:7, 2:26–27, 5:47–51; Ex. 1003 ¶ 118). In addition, Petitioner shows that these control signals were well-known in the art and would have been known to one of ordinary skill in the art at the time of the invention, supporting its showing with additional testimony from its declarant. Id. at 44 (citing Ex. 10183, 2:39–47, 5:35–38; Ex. 10194 ¶¶ 3, 13; Ex. 1003 ¶¶ 44–45, 118). We conclude Petitioner’s evidence regarding the showing in Hart-787 is sufficient with respect to this point. Hart-787 describes altering a signal sent to the speaker to attenuate the audio from that speaker. Ex. 1004, 1:67– 2:1. Petitioner’s declarant testifies that using transmitted control signals to do this would have been known to one of ordinary skill. Ex. 1003 ¶¶ 44–45, 82, 118. We consider Petitioner’s evidence regarding what one of ordinary skill in the art would have understood from Hart-787’s disclosure to be sufficient for the showing regarding the “causing one or more commands to be automatically issued to the controllable appliance to thereby cause” that appliance to transition to a lower volume level, as required in limitation 1.e. While Patent Owner argues that Petitioner’s declarant “concede[s] that Hart- 787 does not disclose or teach how its voice-controlled device decreases the audio output of the controllable appliance,” the cited portion of the” slip op. at 25

  Patent outcomesUS 10,930,276 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,930,276
• Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12

  Patent outcomesUS 8,378,875 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,378,875
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Apple Inc. v. Scramoge Technology Ltd.Some claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00350 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–12 and 14–20 are unpatentable as obvious; claim 13 is not shown unpatentable. Proposed substitute claims 21–23 are unpatentable, so the revised motion to amend is denied.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner’s proposed combination of Hong and Park teaches the recited short-range communication antenna of limitation 1.3. We also are persuaded that Petitioner’s proffered reasoning for modifying Hong’s device to include Park’s NFC antenna coil is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 20

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “claims 1, 12, and 11, respectively. RMTA 1. A listing of proposed substitute claims 21–23 is provided by Patent Owner in the Appendix of its Revised Motion to Amend. Id. at 25–29. For the reasons explained below, we determine that Patent Owner has shown that proposed substitute claims 21–23 meet the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. We also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 21–23 are unpatentable over prior art. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 62

  • ExcludeOther

    “We do not rely on either of Exhibits 2017 and 2018. Accordingly, Petitioner’s Motion to Strike is dismissed as moot.” slip op. at 118

  Patent outcomesUS 9,806,565 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 9,806,565
• Verizon Business Network Services, Inc. v. Huawei Technologies Co., Ltd.Some claims unpatentable
  PTAB · Jan 11, 2022 · IPR2020-01079 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 2, 5, 7, 9, 10, 12, and 14 are unpatentable over Becker and Kenoyer ’423; claim 6 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The principal difficulty with Patent Owner’s arguments is that they improperly conflate transferring desktop information with the claim’s 4 The ’288 patent instead uses the uncommon acronym “PAUNTSC,” presumably a result of incorrectly printing “L/” as “U.” recitation of “capturing” desktop information. Indeed, Dr. Bhattacharjee concedes that “the desktop information as described in the ’288 patent is transferred in digital form,” even as he maintains his opinion that desktop information is not limited to digital capture by the ’288 patent. Ex. 1020 ¶ 11. There is thus no dispute among the expert witnesses, nor the parties, that the ’288 patent describes the digital transfer of desktop information. As Dr. Bhattacharjee explains, this is a consequence of the fact that “the [’288] patent describes and claims transferring desktop information only after it is encoded.” Ex. 1020 ¶ 12. Because such encoding occurs only after the desktop information is captured, “the captured desktop information could either be digital or analog.” Id. The aspects of the intrinsic record that Patent Owner identifies as supporting its proposed construction are, in fact, consistent with this distinction between capture and transfer. For example, the “advantage of the invention” identified by Patent Owner is specifically described by the ’288 patent as raising clarity on the video communication terminal when “[d]esktop information of a PC is transferred directly in a digital coded bit stream mode without converting digital signal to analog signal.” See Ex. 1001, 2:35–39 (emphasis added). This is, moreover, consistent with the portion of the prosecution history Patent Owner identifies and which also makes clear that “the desktop information of a PC is transferred in a digital coded bit stream.” Ex. 1002, 159 (emphasis added). Petitioner’s expert, Dr. Bhattacharjee “agree[s] the desktop information as described in the ’288 patent is transferred in digital form,” even though it is not captured in digital form. Ex. 1020 ¶ 11. And although the ’288 patent’s remarks about the “second” prior-art” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “technical dictionary definitions. Id. When deciding to institute this proceeding based on the preliminary record, we declined to adopt Petitioner’s proposal, which was also not adopted by the district court in the related litigation. Dec. 12. The parties have not revisited this preliminary determination during the trial and we see no compelling reason to reach a different determination based on the full record. We according construe “bit stream” in accordance with its plain and ordinary meaning as a stream of bits.” slip op. at 17

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both proposals appear reasonable on the record before us. Although we invited the parties “to address whether material differences exist between their respective proposals and what impact, if any, the different proposed levels have on the obviousness analysis,” neither party has done so. See Dec. 11 n.3. We apply the proposal articulated by Patent Owner, but we would reach the same conclusions under either proposal.” slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “skill in the art] would be motivated to combine even when bandwidth is shared”: (1) “the shared nature of the bandwidth only highlights that reduced bandwidth usage for desktop information provides the capability of a higher quality signal for the live stream without any extra costs in components or processing”; (2) because Kenoyer ’423 “does not disclose using a dedicated or fixed amount of bandwidth . . . , any reduction in bandwidth would reduce overall usage”; and (3) “even in a dedicated environment, Kenoyer ’423’s reduced bandwidth needs for desktop information would reduce the amount of dedicated bandwidth that is required, potentially saving costs or power.” Reply 12 (citing Ex. 1020 ¶¶ 31–32). These reasons are directly responsive to arguments raised by Patent Owner in its Response and are therefore properly considered. See 37 C.F.R. § 42.23(b). We also find such reasons, which are supported by additional testimony by Dr. Bhattacharjee, adequately explain how Patent Owner’s distinction is accommodated within Petitioner’s expressed rationale of “minimizing bandwidth usage.” See Ex. 1020 ¶¶ 31–32. Second, Patent Owner contends that, if “Kenoyer ’423 were interpreted as teaching reducing bandwidth, it does so in a different manner than in Becker.” PO Resp. 37. Specifically, “Becker addresses bandwidth reduction by using signal compression techniques,” Patent Owner says, while “Kenoyer ’423 prevents the increase in bandwidth . . . by dynamically sharing bandwidth when both a live view of the presenter and the presenter’s computer screen are being shared.” Id. Dr. Bhattacharjee disputes this distinction by observing that Kenoyer ’423’s technique still “reduces the number of bits required to convey the same video information,” and is thereby broadly encompassed as a form of “signal compression.” Ex. 1020 ¶ 33. Dr. Rosing does not specifically disagree with Dr. Bhattacharjee’s characterization. See generally Ex. 2022 ¶ 99. Regardless, both Becker and Kenoyer ’423 support Petitioner’s rationale of “minimizing bandwidth usage.” Patent Owner inadequately explains how a distinction in the precise manner that might be accomplished by the two references diminishes the support provided by the rational underpinnings identified by Petitioner. See PO Resp. 37 (Patent Owner making the conclusory statement that “[a]s such, Petitioner fails to provide a valid motivation for combining Becker and Kenoyer ’423”).” slip op. at 26

  Patent outcomesUS 7,609,288 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,609,288

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.