• Kia Corp. / Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Jan 26, 2026 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–5 and 7–21 are unpatentable over Kleve-based grounds; claim 6 was not shown unpatentable because the record did not support obviousness of key sharing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts a person of ordinary skill in the art would have “had at least a four-year undergraduate degree in electrical engineering, automotive engineering, or a closely related field and at least two years of experience in the field of access control systems, vehicle electronics, and/or cryptography.” Pet. 8–9 (citing Ex. 1004 ¶ 85). Dr. Almeroth supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1004 ¶ 85. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and appears to apply Petitioner’s proposed level of skill. See PO Resp. Patent Owner’s declarant, Dr. Malek, explicitly adopts Dr. Almeroth’s level of skill in the art but states that his opinions would be applicable under any reasonable definition for an ordinarily skilled artisan at the critical time. See Ex. 2021 ¶ 38. For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’659 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We do not agree with Patent Owner’s argument that Dr. Almeroth’s declaration testimony contradicts Kleve. See PO Resp. 27–29. Rather, as discussed previously, we find that Kleve’s vehicle owner can set a restriction, such as the rental start period, prior to step 214 in Kleve’s Figure 2 and that such restrictions can be associated with the e-key. We also do not agree with Patent Owner’s argument that (1) Dr. Almeroth’s declaration testimony contradicts his deposition testimony or that (2) Dr. Almeroth “admitted his testimony was wrong.” See PO Sur-Reply 7 (citing PO Resp. 47–48 (citing Ex. 2022, 27:5–10, 27:21–28:1; Ex. 2021 ¶ 96)). In a particular embodiment to which Dr. Almeroth was citing, he noted that the e-key is always generated after the rental agreement. See Ex. 2022, 26:14– 20. Then the following exchange occurs: Q. So you use typically and always. So always does not refer to all of the embodiments of Kleve, is that fair? A. I think a person of skill in the art could read Kleve and understand that there are probably multiple ways in which the flow of actions among the parties could occur. And I think thinking about a real world scenario, in most cases you have an agreement before you would generate an eKey, but maybe, maybe not. I don’t -- I don’t know that the real world is necessarily cut and dry. So reading -- a person reading Kleve would understand it’s describing embodiments where it’s scenario, but I don’t know that it would necessarily be a hard and fast rule in every embodiment or in the understanding a person of skill in the art would have. Id. at 28:3–20. There is nothing in the deposition testimony by Dr. Almeroth that appears inconsistent with his declaration testimony nor does there appear to be the kind of admission touted by Patent Owner. Instead, it is Dr. Malek who takes an overly narrow view of Kleve that appears inconsistent with Kleve’s disclosure when read as a whole. See, e.g., Ex. 2021 ¶¶ 82–88. Therefore, we do not credit or agree with Dr. Malek’s testimony that Kleve fails to teach the concept of a virtual key created with the agreed-upon rental period as a restriction. See id. ¶ 57. Thus, based on the entire trial record, we find that Petitioner has” slip op. at 33

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

    “After review of the arguments and evidence, we agree with Petitioner’s position. Specifically, we agree that (1) both Kleve and Hatton are directed to use of electronic key systems for vehicles (see Ex. 1005 ¶¶ 7– 9, 39, 63; Ex. 1008, 1:48–52, 1:61–2:2, 5:25–34) and (2) encrypted communications would have been understood to be effective in preventing unauthorized access to the vehicle, something that is taught explicitly by Hatton (see Ex. 1008, 9:50–63). Given these disclosures by Kleve and Hatton, we find that a person of ordinary skill in the art would have had a at the challenged claims. Accordingly, we find that a person of ordinary skill in the art at the critical time would have had a reason to combine the teachings of Kleve with that of Hatton.” slip op. at 36

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

    “We agree with Patent Owner. Petitioner’s argument appears to be purely hindsight analysis based on the teachings of the ’659 patent and the limitations of challenged claim 6 because there is insufficient evidence or teachings in the cited prior art to suggest the sharing of virtual keys. Petitioner’s argument that having “rental microbusiness” implemented as a “smart phone application” that enables sharing virtual keys is insufficient to show obviousness, because, as noted by Patent Owner, certain embodiments in Kleve appear to discourage or even hinder the sharing of virtual keys. These embodiments require the use of credentials associated with the virtual key, where the credentials can be “facial recognition, voice print recognition, matrix barcode (ex. two-dimensional code), code word or phrase for speech recognition, temporary mobile web login IDs and password, or other types service.” See Ex. 1005 ¶ 37. Dr. Almeroth testifies that multiple people could be authorized on the same vehicle if they collectively rent a vehicle and that a person of ordinary skill in the art would “have been motivated to enable each user to share the virtual key with other authorized users associated with the same rental request.” Ex. 1004 ¶ 55. But given Kleve’s disclosure that the system handles key generation and distribution (Ex. 1005 ¶ 39), the evidence does not show that a person of ordinary skill in the art would have wanted to give this control to each authorized user who has received an e-key. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Kleve’s teachings undermine Petitioner’s position, and do not support a finding of obviousness. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Kleve alone or in combination with Hatton would have rendered dependent claim 6 obvious to a person of ordinary skill in the art at the critical time.” slip op. at 39

  Patent outcomesUS 11,738,659 mixed
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,738,659
• Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.

  RulingsFinal written decision

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

    “arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with the prior art. 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).” slip op. at 12

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

    “However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79

  • BurdenNot shown unpatentable

    “Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65

  Patent outcomesUS 9,171,268 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,171,268
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01231 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable under §103; claims 1–21 were not shown unpatentable because the cited combinations do not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

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

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

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

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position.” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Charter Communications, Inc. / Altice USA, Inc. v. Touchstream Technologies, Inc.Some claims unpatentable
  PTAB · Jun 12, 2025 · IPR2024-01262 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 22–26 are unpatentable as obvious; claims 1–21 were not shown unpatentable because the asserted combinations did not teach or justify the claimed server-side command conversion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner contends that a person of ordinary skill in the art of the ’251 patent would have had: (1) the equivalent of a four-year, B.S. degree from an accredited institution in computer science, computer engineering or an equivalent field; (2) approximately two years of professional experience with Internet-based video delivery systems; and (3) working proficiency with network architecture, including Internet-hosted server-client systems, and with computer programming. PO Resp. 21 (citing Ex. 2025 ¶¶ 24–25). Patent Owner’s declarant, Dr. Wicker, testifies that the parties’ definitions are only “slightly different,” and that if Dr. Wicker were to adopt Petitioner’s definition, that would not change any of his opinions. Ex. 2025 ¶ 24. Because the parties’ definitions of a person of ordinary skill in the art only “slightly differ,” we accept the assessment offered by Petitioner, which appears consistent with the ’251 patent and the asserted prior art. Regardless of which definition is applied, our analysis and decision would not change.” slip op. at 11

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

    “C. Claim Construction Both parties propose construing the claim term “media player” because it was construed in a related inter partes review proceeding as well as in a district court case. Pet. 19; PO Resp. 21. According to Patent Owner, construing “media player” to mean “software for playing media” would be consistent with the construction applied in both related proceedings. PO Resp. 21. Petitioner agrees, noting that the term “media player” “‘refers to software and not to a hardware device.’” Pet. 19 (citing Ex. 1164, 13). player” used by both parties, and we need not engage in any further claim construction because there are no claim construction disputes that bear on the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Alleged Obviousness of Claims 1–26 in View of Danciu and Mahajan or” slip op. at 11

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

    “attempts to extrapolate Mahajan’s specific teachings and specific architecture into a general principle such that specific commands are converted to universal commands and then universal commands are converted to specific commands regardless of the location of the process within a distributed system. See Tr. 14:5–11. Rather, we agree with Patent Owner that Petitioner’s extrapolation arguments are unsupported by Mahajan. We understand Petitioner argues that Mahajan’s “distributed computing environments” would have rendered it obvious to alter the location where command conversions occur. Pet. 41; Reply 10–11, 14. Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain” slip op. at 24

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “Mr. Lett testifies that Mahajan “allows for its server media abstraction module to be located in a processing device that may not typically be labeled a ‘server,’ such as remote control 14 of Danciu.” Ex. 1198 ¶ 9 (citing Ex. 1102 ¶ 162; Ex. 1114 ¶ 17). Yet, both Petitioner and Mr. Lett fail to explain how or why a person of ordinary skill in the art would take the distributed nature allowed by Mahajan and completely flip its teachings to put a client or remote device process on a server device. Mr. Lett further fails to explain how or why one would want to move Mahajan’s abstraction layer in the first place. Although Mahajan teaches that its system can operate in a distributed environment, based on the explicit disclosure of Mahajan and its examples, we do not understand “distributed” to mean that (i) the server processes can occur on client devices and (ii) that client processes can occur on server devices. See Ex. 1114 ¶¶ 51, 58, 60, 61, 76, 77. Rather, we understand “distributed computing environments” to encompass “an environment where tasks are performed by remote processing devices that are linked through a communications network” because that is what is taught in Mahajan. Id. ¶ 58. Our understanding is supported by the testimony of Mr. Lett. See Ex. 1198 ¶ 8 (reciting the explicit disclosure in Mahajan). It is clear, based on the plain reading of Mahajan, that the distributed environment indicates that server 202 and client 204 could be located in different locations, but would be linked through a communications network where user-command 230 flows from client 204 to server 202. See Ex. 1114 ¶ 35, Fig. 2. At no point does Mahajan teach or even suggest that user-commands 230 would flow from server 202 to client 204 as proposed by Petitioner. Additionally, we find insufficient reason in the record to explain Petitioner’s argument appears to be based completely on hindsight bias created in view of the challenged claims. Therefore, we find little credibility in Mr. Lett’s testimony regarding the change or in Petitioner’s position. To the contrary, we find Dr. Wicker’s testimony to be credible because it is supported by the disclosures in both Mahajan and Danciu. Specifically, we agree with Dr. Wicker, who testified that Mahajan does not describe an abstraction layer as ever being on “a server in the network.” See Ex.1197, 18:21–24. We also find Dr. Wicker’s testimony credible when he explained that even if Mahajan’s abstraction layer were implemented on a server in a network as posited by Petitioner, it still would not result in the claim mapping proposed by Petitioner. See Ex. 2025 ¶ 45 (Dr. Wicker: “[T]he two abstraction modules work together to create a ‘collaboration media abstraction layer 130.’”) (citing Ex. 1114 ¶ 22; Ex. 2027, 39:6–40:12, 44:10–19 (Mr. Lett reading from and agreeing with paragraph 45 of Dr. Wicker’s Declaration)).” slip op. at 25

  Patent outcomesUS 8,356,251 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,356,251
• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-01520 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable, and the contingent motions to amend remained denied.

  RulingsRemand decision

  • RemandOther

    “CONCLUSION After reviewing the record developed during trial anew and taking into account the Federal Circuit’s decision, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 of the ’635 Patent are unpatentable, and that Petitioner has not demonstrated by a preponderance of the evidence that claim 3 of the ’635 Patent is unpatentable.” slip op. at 103

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

    “in the art would have understood “encrypted video” recited in claim 4 to exclude teletext and would recognize “video” to be distinct from static text and images. 754-PO Resp. 19. Petitioner counters that “video” is any information that is visually perceivable including the display of static pictures. 754-Pet. Reply 5 (citing IPR2016-00754, Ex. 2028, 10–12; IPR2016-00754, Ex. 1003, 278:21–24, 258:16–19, 13:38–52, 188:17–18, 249:53–56). During oral argument, Petitioner argued that a single image can qualify as video. IPR2016-00754, Paper 40, 14:24–25 (“JUDGE WARD: So one image qualifies as video. MR. SERNEL: I think arguably it would.”). We do not agree with Petitioner’s position that the display of a static image constitutes “video”; otherwise, there would be no difference in an image and video. We determine that video requires moving visuals. In its Preliminary Response, Patent Owner stated that video shows movement and changes within an image. IPR2016-00754, Paper 7, 60 (citing IPR2016- 00754, Ex. 2001 ¶ 122). Petitioner’s Declarant Mr. Wechselberger seems to agree as he describes that “[s]uccessive frames of text and/or graphics presented on the display means 20 constitutes video.” IPR2016-00754, Ex. 1001 ¶ 141. We determine that the construction of the term “video” recited in claim 4 of the ’635 Patent means “visually perceivable non-static imagery.”” slip op. at 44

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

    “teletext in accordance with its well-known capabilities as part of a television program. IPR2016-00754, Ex. 1001 ¶ 201. As the Supreme Court instructed in KSR, it is proper to “consider the inferences and creative steps a person of ordinary skill in the art would employ.” 550 U.S. at 401. Based on the foregoing, we determine Petitioner has provided a sufficient rationale for the modification of Guillou. Id. at 418. Accordingly, we determine the record supports Petitioner’s proposed modification of Guillou such that the encrypted materials comprise a portion of a television program, and we adopt Petitioner’s contentions as our own.” slip op. at 57

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Apple Inc. v. Personalized Media Communications LLCSome claims unpatentable
  PTAB · Sep 8, 2022 · IPR2016-00754 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 4, 7, 13, 18, 20, 21, 28–30, 32, and 33 were held unpatentable; claim 3 was not shown unpatentable.

  RulingsRemand decision

  • RemandOther

    “D. Scope of Consideration on Remand Per the briefing on remand, Petitioner asserts that the above-discussed” slip op. at 11

  • Adverse judgmentAdverse judgmentOther

    “1 Patent Owner subsequently disclaimed claims 1 and 2 of the ’635 Patent (IPR2016-00754, Ex. 3001), such that we need not consider those claims with respect to the instituted grounds. 2 US Patent No. 4,337,483, filed Jan. 31, 1980 (Ex. 1006) (“Guillou”). 3 US Patent No. 4,388,643, filed Apr. 6, 1981 (Ex. 1008) (“Aminetzah”). 4 US Patent No. 3,743,767, filed Oct. 4, 1971 (Ex. 1009) (“Bitzer”). 5 Under Board practice at the time, not all grounds and claims proffered in the Petition were instituted.” slip op. at 2

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

    “L. Contingent Motions to Amend As discussed above, Patent Owner also filed a Contingent Motion to Amend in each proceeding (IPR2016-00754, Paper 15; IPR2016-01520, Paper 16). In respective Final Written Decisions (754-FWD, 1520-FWD), we denied both contingent motions to amend. See 754-FWD, 64–71; 1520- FWD, 55–66. As neither the Federal Circuit decision in PMC, nor the Order Granting Request for Director Review, addressed the contingent motions to amend, we incorporate-by-reference our prior analyses and continue to deny those motions, save consideration of one claim, discussed below. In both Final Written Decisions, we were not persuaded that Patent Owner had demonstrated that the substitute claims had proper written description support, with the exception of one claim in each Motion to Amend, where those latter, substituted claims were not shown to be patentable over the prior art of record. See 754-FWD, 64–71; 1520-FWD, 55–66. With respect to IPR2016-01520, substitute claim 41, a proposed substitute for challenged claim 3, was shown to have proper written description support. 1520-FWD, 62–63. As discussed above, however, claim 3 has not been demonstrated to be unpatentable, such that proposed, substitute claim 41 need not be considered, based on the contingencies specified in the Contingent Motion to Amend. IPR2016-01520, Paper 16.” slip op. at 101

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art According to Petitioner’s Declarant, Mr. Wechselberger, a person of” slip op. at 15

  Patent outcomesUS 8,559,635 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,559,635
• Xilinx, Inc. / Xilinx Asia Pacific Pte. Ltd. v. Analog Devices, Inc.Some claims unpatentable
  PTAB · Mar 11, 2022 · IPR2020-01564 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1, 2, and 4–8 were not shown unpatentable; claim 12 was shown unpatentable as obvious over Elbornsson and Jamal, and over Eklund and Jamal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner asserts a person of ordinary skill in the art (“POSITA”) at the time of the invention “would have at least a Master’s Degree in Electrical Engineering or equivalent field, including studies in designing data converters, and two to five years of relevant experience; or a Ph.D. degree in Electrical Engineering or equivalent field.” Pet. 34 (citing Ex. 1202 ¶¶ 17–18). Patent Owner does not address the level of ordinary skill in the art in its Response. See generally PO Resp. For purposes of this decision, we adopt Petitioner’s formulation because it is consistent with the ’750 patent and the asserted prior art.” slip op. at 9

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

    “U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. §42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Patent Owner contends that “random clock,” “offset sensing circuit,” and “sensing” a gain or offset signal need to be construed. PO Resp. 13–17. Petitioner contends that no construction of any term is necessary. Reply 2– 5. The contentions of the parties were addressed in our Final Written Decision for IPR2020-01483, which was mailed on the same day as this Decision. We decline to construe these terms for the reasons given in that Final Written Decision.” slip op. at 9

  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner

    “Dr. Raychowdhury testifies that, in Jamal’s technique, “the input is de-correlated from the pseudo random chopping sequence.” Ex. 2206 ¶ 64. Then, inexplicably, Dr. Raychowdhury testifies that “Jamal is unambiguous that ‘C[m] is white, has zero mean, and is uncorrelated with the input signal.’” Id. at ¶ 69. Patent Owner does not explain nor even address Dr. Raychowdhury’s inconsistent testimony. Given the inconsistent positions taken by Patent Owner’s expert, and the lack of explanation from Patent Owner, we give no weight to Dr. Raychowdhury’s testimony.” slip op. at 14

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

    “Even were we to accept Petitioner’s contention, that a ‘“random clock’ can be satisfied by a 1-bit pseudo-random bit sequence,” (Pet. 36), Jamal discloses that the alleged random clock C[m] “is uncorrelated with the input signal.” Ex. 1205, 8. A chopping SHA multiplies the input signal and the uncorrelated random signal C[m], then provides a chopped analog signal to the ADC converter. Id. Petitioner has not persuasively shown that chopping an input signal with an uncorrelated random signal, then providing the chopped signal to a converter as disclosed by Jamal, describes “said random clock configured to decorrelate an input signal provided to said first converter from said random clock” as recited in claim 1. We find that claim 1 is not unpatentable based on Jamal. Because claims 2 and 4–6 depend from claim 1, we find that these claims are also not unpatentable based on Jamal.” slip op. at 15

  Patent outcomesUS 6,900,750 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,900,750
• Canon Inc. / Canon U.S.A., Inc. et al. v. Avigilon Fortress CorporationSome claims unpatentable
  PTAB · Feb 5, 2019 · IPR2017-01837 · APJ Kimberly Mcgraw · IPR · Final written decision

  Claims 1–19 and 23–37 are unpatentable as obvious; claims 20–22 were not shown unpatentable. The contingent motion to amend was denied in part and dismissed in part.

  RulingsFinal written decision

  • 112 supportMotion to amend, deniedDenied

    “For the foregoing reasons, we find Patent Owner has not shown sufficient written description support for the proposed added claim language that requires detection of a tracked object from one side of a tripwire line segment to another. As such, we determine that proposed substitute claims 38–56 and 60–74 improperly introduce new matter under 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii) and we deny Patent Owner’s Motion to Amend as it relates to proposed substitute claims 38–56 and 60– 74. Accordingly, for the foregoing reasons, we deny-in-part and dismiss-in-part Patent Owner’s motion to amend.” slip op. at 73

  • ExcludeMotion to exclude, deniedMixed

    “Dr. Papanikolopoulos’s Declaration in support of Petitioners’ Opposition to Patent Owner’s Motion to Amend (Ex. 1036) as an improper attempt to incorporate declaration arguments into the opposition brief to avoid page limits. Mot. Exc. 7–8. We disagree with this argument. Contrary to Patent Owner’s characterization, the opposition brief provides a sufficient discussion of the cited portions of Dr. Papanikolopoulos’s declaration and explains the significance of the testimony. In light of this, we conclude that Petitioner has not improperly incorporated by reference declaration testimony to avoid page limitations. Accordingly, we deny Patent Owner’s motion to exclude Exhibit 1036 for improper incorporation by reference.” slip op. at 74

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

    “E. Asserted Anticipation of Claims 1–10 by Winter Claim 1 recites, inter alia, a “computer system . . . for performing calibration.” As stated above in Section II.C.2., we construe this phrase as a means plus function element under 35 U.S.C. § 112 ¶ 6. Petitioner does not provide any argument that Winter teaches a “computer system . . . for performing calibration” under this construction. Accordingly, Petitioner has not shown by a preponderance of the evidence that Winter discloses each and every limitation of claim 1. Therefore, Petitioner has not demonstrated by a preponderance of the evidence that claim 1, and claims 2–10 which depend therefrom, are anticipated by Winter. F.” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “segmenting steps as recited in claims 19, 27, and 29 because (1) Winter does not teach pixel-level modeling and (2) a POSITA would not combine Winter and Olson. Id. at 59, 61. We disagree with these arguments because Petitioner relies upon Olson, not Winter, for teaching pixel-level modeling. Accordingly, as explained in Section II.F.1., we find that Petitioner has provided articulated reasoning with rational underpinning for combining the teachings of Winter and Olson. Claims 2–10, 23–26, 28, 30, 33, and 35–37 Petitioner contends that Winter and Olson teach the additional limitations of dependent claims 2–10, 23–26, 28, 30, 33, and 35–37. Pet. 32– 40, 42–50. Other than arguments relating to the patentability of the base claims from which claims 2–10, 23–26, 28, 8, 30, 33, and 35–37 depend, Patent Owner does separately argue the patentability of the dependent claims. See generally PO Resp. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We have reviewed the parties’ arguments and evidence and agree with Petitioner and find that Winter and Olson teach the subject matter of claims 2–10, 23–26, 28, 30, 33, and 35–37. We agree with and adopt Petitioner’s analysis as to these claim elements. Based on the record developed during trial, we conclude Petitioner has demonstrated by a preponderance of the evidence that claims 2–10, 18, 19, 23–33 and 35–37 would have been obvious over Winter and Olson. Summary For the foregoing reasons, we find Petitioner has demonstrated by a preponderance of the evidence that claims 1–11, 18, 19, 23–33, and 33–37 would have been obvious over Winter and Olson. We find, however, Petitioner has not demonstrated by a preponderance of the evidence that claims 20–22 would have been obvious over Winter and Olson. G. Asserted Obviousness of Claims 1–10 and 25–32 over Winter, Olson, and Togashi Petitioner contends that claims 1–10 and 25–32 over would have been obvious over the combined teachings of Winter, Olson, and Togashi. Petitioner contends that to the extent the claims require a more detailed algorithm for a tripwire beyond Winter’s disclosure, Togashi’s teaching of an algorithm used to detect when an object overlaps a line makes up for any deficiencies. Pet. 33–34 (citing Ex. 1006, 2–3, Figs. 1, 8; Ex. 1002 ¶¶ 117, 345), 58 (citing Ex. 1002 ¶¶ 420–422), 61, 63–64. Specifically, Petitioner contends that Togashi teaches a more detailed algorithm for detecting when an object overlaps a line (tripwire) by comparing the pixel luminance of the line between a background image at time t=t0 and a new image at time t=t1, generating a difference value for each pixel, binarizing each pixel into “0” or “1” based on a predetermined threshold value, and determining that an object overlaps the line if the number of pixels on the line having the value “1” is greater than a threshold number. Id. at 33 (citing Ex. 1007, 4, Figs. 3(a), 3(b), 3(c), 3(d)). Petitioner further contends that it” slip op. at 53

  Patent outcomesUS 6,696,945 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,696,945
• EMC Corporation / Lenovo (United States) Inc. et al. v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Jun 20, 2018 · IPR2017-00439 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1, 3–6, 8, 9, 13, 15–18, 20, and 21 are unpatentable over Carter; claims 5 and 17 are also obvious over Carter and Pitzel.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededDecided for petitioner

    “We agree with Patent Owner regarding the ordinary meaning of the term “respectively.” Specifically, we understand that the word “respectively” can be an adverb that means “for each separately or in turn, and in the order mentioned.” The use of “respectively” as an adverb in the English language requires parallelism. See Ex. 3002. In other words, there must be a direct one-to-one correspondence and specific referents must be individually identified before there can be a “parallel list” of attribute values applicable to each, in that order. The term “respectively” also can be an attributive adjective that means “concerning or appropriate to each of several individually.” Id. In the present case, the term “respectively” appears to modify “the selected distributed devices.” Because specific referents are not individually identified, we understand the term to act as an attributive adjective modifying each of several selected distributed devices. Although we agree with Patent Owner regarding the use of the term “respectively,” we do not understand its use to require “the selected distributed devices to cause each selected distributed device to separately appear to network-connected user devices as a dedicated NAS device.” We cannot construe individual terms in isolation. Rather, we must consider claims as a whole in view of the specification. Specifically, we must consider the implications of other terms recited in claims 1 and 13 (e.g., “location information”) and how the claims are supported by the disclosed embodiments.” slip op. at 11

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner contests Petitioner’s definition of a person of ordinary skill in the art, specifically arguing that “Petitioners’ proposed requirements especially with regard to work experience, are higher than can be reasonably supported.” PO Resp. 5. Patent Owner notes that Petitioners’ declarant, Dr. Kubiatowicz, testified on cross-examination that “somebody coming directly out of college, likely, would need a couple of extra years to understand this,” and that “a little bit of professional experience might help them -- would help them understand the details involved in this case.” Id. (citing Ex. 2002, 25:13–14; 26:2–5). Patent Owner’s declarant, Dr. Shenoy, testified that, “at the time of the ’827 patent, a person of ordinary skill in the art should have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” Ex. 2003 ¶ 19. According to Dr. Shenoy, “[l]ack of experience can be remedied by additional education or vice versa.” Id. Based on our review of the ’827 patent, the types of problems and solutions described in the ’827 patent and cited prior art, and the testimony of Dr. Kubiatowicz and Dr. Shenoy, we adopt and apply Patent Owner’s definition of a person of ordinary skill in the art, specifically that a person of ordinary skill in the art at the time of the claimed invention would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, with 1–2 years of work experience in the field of computer networking, storage systems, or a related field.” See id. We also determine that such a person would have been familiar with computer systems architecture and design, and would have been aware of design trends relating to distributed processing systems.” slip op. at 18

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

    “Despite Patent Owner’s arguments, we find that Carter’s policy element 290 (a software module) is configured to assess unused or under-utilized storage resources in selected distributed devices of the plurality of distributed devices. We understand policy element 290 to satisfy this limitation because Carter specifically discloses that policy element 290 “acts as a controller to determine the availability of resources, such as printer capabilities, hard-disk space, available RAM and other such resources.” Ex. 1140, 36:27–29 (emphases added). We credit the testimony of Dr. Kubiatowicz, who during his deposition stated, “I would say this policy controller certainly can evaluate the hard disk space on the local node, but could also potentially evaluate storage throughout the system by communicating with other nodes.” Ex. 2002, 86:13–16; see id. at 88:5–7; see also id. at 88:12–16 (“What I said was that this policy element is determining the availability of resources. So it’s assessing whether or not hard disk space of various sorts is available. So it’s availability, not just available.”); see id. at 88:18–89:18, 90:5–91:1. We further credit the testimony of Patent Owner’s declarant, Dr. Shenoy, who testified that Carter discloses “determin[ing] the free volume space available for allocation.” See Ex. 1144, 142:19–20 (referencing Ex. 1140, 19:14–17). Reading directly from Carter, Dr. Shenoy further testified that Carter discloses “request[ing] the total available space information and us[ing] this information to quickly determine whether to proceed with the allocation processing.” Id. at 142:14–17, 143:1617. In view of the explicit disclosure of Carter and the testimony of both declarants, we find that Carter’s controller performs an “assessment” in order to “determine the availability of resources.” Additionally, Carter states that policy controller 290 “can employ any of the suitable heuristics to direct the elements, such as the paging controller, disk directory manager, and other elements to dynamically distribute the available resources.” Ex. 1140, 36:29–37:2. Thus, we agree with Petitioner’s argument, as supported by the testimony of Dr. Kubiatowicz, that policy element 290 assesses the unused or underused storage resources when it determines the availability of such resources and uses some heuristics when distributing those resources that were assessed. See Pet 39 (citing Ex. 1102 ¶ 118). Accordingly, based on the entirety of the record before us, we find Petitioner has shown by a preponderance of the evidence that Carter discloses the “assessing” limitations of claims 1 and 13.” slip op. at 31

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

    “We agree with Patent Owner that Petitioner fails to offer sufficient explanation as to why a person of ordinary skill in the art would have combined the teachings of Carter and Condor. Rather, Petitioner appears to argue that, based on the advantages described by Condor (Ex. 1017, 5), and using well-known techniques with unspecified predictable results, a person of ordinary skill in the art would have had sufficient reason to combine these disparate elements taught in the prior art references to render the challenged claims obvious. Pet. 61–66. Yet, other than Petitioner’s cursory assertion of “advantageously incorporat[ing] the central coordinator in Condor to provide a centralized mechanism to manage resource sharing” (Pet. 66), which cites equally cursory and unsupported testimony by Dr. Kubiatowicz (Ex. 1102 ¶ 199), Petitioner fails to identify what particular advantages or efficiencies would have prompted a person of ordinary skill in the art to combine Condor’s scheduler with Carter’s system. Furthermore, Dr. Kubiatowicz’s testimony regarding predictable results and obviousness to try are similarly lacking in elaboration and substantiation. See Ex. 1102 ¶¶ 200–201. Such conclusory statements and unspecific testimony without evidence on the record cannot satisfy the Petitioner’s burden of demonstrating obviousness. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); I/P Engine, Inc. v. AOL Inc., 576 F. App’x 982, 999 (Fed. Cir. 2014) (“The testimony of the Defendants’ expert amounts to a ‘mere conclusory statement’ that may not serve as a basis for finding the asserted claims obvious.”); see also InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014) (holding that expert’s testimony could not support a finding of obviousness where “testimony primarily consisted of conclusory references to [the expert’s] belief that one of ordinary skill in the art could combine these references, not that they would have been motivated to do so”); see also 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.”). Although Petitioner has not provided a sufficient rationale to combine in this asserted ground of unpatentability, Petitioner has otherwise demonstrated that claims 4, 6, 16, and 18 are unpatentable under 35 U.S.C. § 102(b) because they are anticipated by Carter. Petitioner, however, has not asserted claims 7 and 19 are unpatentable under any other ground in this proceeding. Therefore, we determine Petitioner has failed to establish by a preponderance of the evidence that claims 7 and 19 of the ’827 patent are unpatentable under 35 U.S.C. § 103(a) in view of Carter and Condor.” slip op. at 59

  Patent outcomesUS 8,275,827 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,275,827
• Hamamatsu Corporation v. Sionyx, LLCSome claims unpatentable
  PTAB · Mar 28, 2018 · IPR2016-01910 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1, 2, 4–11, 13–18, 21, and 23–25 were held unpatentable; claims 12 and 26 were not, based on the stated anticipation and obviousness grounds.

  RulingsFinal written decision

  • BurdenMixed

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, 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). Thus, to prevail in an inter partes review, Petitioner must explain how the prior art anticipates the challenged claims and how the proposed combinations of prior art would have rendered the challenged claims unpatentable. We analyze the challenges presented in the Petition in accordance with the above-stated principles. slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s declarant, Dr. Souri, testifies that a person of ordinary skill in the art relevant to the ’591 patent “would hold a bachelor’s degree in physics, electrical engineering, or a related discipline, and have at least one year of experience working in the field of semiconductor processing or optoelectronic device design.” Ex. 1010 ¶ 32; Pet. 8. Patent Owner applies Petitioner’s proposed level of ordinary skill in the art for purposes of this proceeding. PO Resp. 7 n.2. Based on our review of the ’591 patent, the types of problems and solutions described in the ’591 patent and cited prior art, the testimony of Petitioner’s and Patent Owner’s declarants, and the arguments and evidence adduced at trial, we agree with and apply Petitioner’s definition of a person of ordinary skill in the art at the time of the claimed invention. See Inst. Dec. 14–15.” slip op. at 17

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “that it would not affect incident light.7 We agree with Petitioner that Nakashiba’s “contact surface S1 is exposed to air, which has a refractive index of about 1, and is formed on a silicon substrate, which has an index of refraction between 3.5-6.5, depending on the wavelength of light,” and “[t]hus, there will be an interaction (reflection and/or refraction) with [incident] light at the contact surface S1.” Reply 6 (citing Ex. 1014 ¶¶ 30, 31); see id. at 7. We credit the testimony of Dr. Souri, who testifies as to differences in the refractive indices of air, silicon, and a finger, and that, when there is a change in refractive index between materials, there is an interaction with light. See Ex. 2012, 119:22–121:16. Dr. Souri further testifies that [W]hen light is incident upon a boundary between materials of different refractive index, both refraction and reflection occur, as is depicted in the diagram above. The fraction of incident light that is refracted, and the fraction which is reflected, may be calculated by Fresnel’s equations, using the angles of incidence and refraction given by Snell’s law. . . . [A] person of ordinary skill in the art would understand that these reflection and refraction effects constitute an interaction with electromagnetic radiation; and, consequently, said person would understand that the roughened surface S1 of Nakashiba satisfies the requirements of the term “interact” as used in the claims of the ’591 patent.” slip op. at 23

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

    “a textured region interacting with electromagnetic radiation in a manner that results in an enhanced response and/or filtering of the radiation, the embodiments do not require the textured region to provide this enhanced response and/or filtering and further, do not define the term “interaction” as an enhanced response or filtering. See Liebel-Flarsheim, 358 F.3d at 908 (“[T]he specification does not describe the invention as limited to embodiments having pressure jackets, and none of the other reasons that have been invoked for giving claims a narrow reading are present.”). The claim language “interact with” is plainly broader than Patent Owner’s proffered construction, and the “position” limitations can be read to encompass features not described in the written description. See Liebel-Flarsheim, 358 F.3d at 908 (“The fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.”)” slip op. at 9

  Patent outcomesUS 8,680,591 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,680,591

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.