• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

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

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

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

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Juniper Networks, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Jan 13, 2026 · IPR2024-00913 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4, 6, 7, 11, 12, 14, 16, and 17 are unpatentable over Blease, Weyman, and Hu, with some claims also over Deng; claims 8–10 and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “disclosure in Weyman (or Blease) for deactivating and activating ports, or performing certain actions in the time between such actions. Again, the only portion of Weyman cited pertains to a request to join the fabric from a processing unit having a “default” configuration, which does not relate to the timing or sequence of events in initialization. See Ex. 1006 ¶¶ 69, 156, 161–162; Ex. 1103 ¶¶ 93–94. Nor does Dr. Lavian point to any other evidence in the record supporting his conclusion that a person of ordinary skill in the art would have “ensure[d] that the processing unit is deactivated prior to being updated for use . . . and then activate[d] the processing unit after updating.” See Ex. 1103 ¶ 94. Accordingly, we give little weight to Dr. Lavian’s conclusory opinion” slip op. at 75

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

    “See Axonics, 73 F.4th at 957; Allied Erecting, 825 F.3d at 1381; Mouttet, 686 F.3d at 1332–33. Petitioner’s position is that, based on the teachings of Weyman, a person of ordinary skill in the art would have modified Blease’s system to distribute the functionality of control unit 44 (including its existing multicast forwarding information 48 used by OIF mapper 50). See Pet. 23–26, 38; Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1222 (Fed. Cir. 2022) (“That the proposed combination of [two references]—rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness. In this case, it is sufficient that a person of ordinary skill in the art would have been motivated to combine the prior art in a way such that the combination discloses the claim limitations.”).” slip op. at 55

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “10 In the Cisco IPR, we determined that Cisco had proven claims 8 and 18 to be unpatentable based on a different combination of references (identified as Weyman, Jain, and LeMaire), finding that limitation 8[f.ii] was taught by Jain and LeMaire. IPR2024-00506, Paper 38 at 58–77. As explained herein, we are not persuaded by Petitioner’s arguments in this proceeding that limitation 8[f.ii] is taught or suggested by Weyman. Also, in the Decision on Institution in this proceeding, the Board found that there were questions as to Petitioner’s showing for limitation 8[f.ii] and declined to reach a conclusion on whether Petitioner had shown a reasonable likelihood of prevailing on its asserted ground based on Blease and Weyman. Dec. on Inst. 43.” slip op. at 71

  Patent outcomesUS 8,014,394 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,014,394
• Cisco Systems, Inc. v. Portsmouth Network Corp.Some claims unpatentable
  PTAB · Aug 4, 2025 · IPR2024-00505 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 10, 13, 14, 16–19, 21, and 22 are unpatentable as obvious over Gai under theory 1B; claims 11, 12, 23, and 24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–67 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id. at 667.” slip op. at 10

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

    “The most common type of MAC bridge is a switch, which has multiple ports connecting it to LANs, other switches, host computing systems, or other network elements. Switches can be roughly classified as access switches or core switches. An access switch has ports that connect to LANs and/or to other network endpoints, such as user computer systems. Core switches interconnect the access switches into a Wide Area Network (WAN), by direct connection between the core switch and access switches and/or by connection to other core switches. Core switches that are directly connected to access switches are referred to herein as edge switches. Ex. 1001, col. 1, ll. 27–38. Both parties refer to this disclosure when arguing whether particular switches in the asserted prior art (Gai) qualify as an “access switch” or “edge switch.” See Pet. 5, 22, 27–28 (“edge switches are ‘[c]ore switches that are directly connected to access switches’”), 71; PO Resp. 31–32 (“The ’986 patent discloses that ‘[a]n access switch has ports that connect to LANs and/or to other network endpoints.’ . . . The ’986 patent also discloses that edge switches are ‘[c]ore switches that are directly connected to access switches.’”); Reply 20, 22. Dr. Houh and Dr. Olivier do so as well. See Ex. 1003 ¶¶ 39, 66–67, 82–83, 166, 171, 193; Ex. 2001 ¶ 80. Based on the full trial record, we agree and conclude that the descriptions of “access switch” and “edge switch” in the ’986 patent reflect what was understood to be the plain and ordinary meanings of these terms at the time of the invention. Accordingly, we interpret “access switch” to mean a switch with ports that connect to LANs and/or to other network endpoints, such as user computer systems, and interpret “edge switch” to mean a core switch that is directly connected to an access switch.” slip op. at 12

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

    “and conclude that Petitioner has not shown sufficiently that a person of ordinary skill in the art would have been motivated to designate switch 117 as the root switch when implementing the network reconfiguration method of Gai. The only mention of an access switch connected to port 7 of switch 114 is at column 13, lines 59–63 of Gai. While that sentence establishes that such an access switch may exist in the network, it does not state or imply that it would be the root switch. Instead, when discussing the operation of the Figure 1 network, Gai only identifies switches 120 and 121 as the root switch. See Ex. 1005, col. 10, ll. 37–41, col. 11, ll. 60–64, col. 14, ll. 16–20, col. 15, ll. 27–29, 38–51, col. 16, ll. 42–45. To be sure, Gai does disclose that “execution of the spanning tree algorithm causes the switches to elect a single switch, among all the switches within each network, to be the ‘root’ switch,” where “[e]ach switch has a unique numerical identifier (switch ID) and the root is the switch having the lowest switch ID numeric value,” such that an access switch can be the root switch if it has the lowest switch ID. See Ex. 1005, col. 2, ll. 42–47, col. 10, ll. 29–36. As Patent Owner and Dr. Olivier explain in detail, though, Gai expressly cautions against doing so. Gai discloses that [d]epending on the configuration of a given network, the location of the root can significantly affect the distance that messages must travel. For example, many networks include a plurality of switches designated as access switches that provide connectivity to LANs, end stations, etc., and a plurality of backbone switches that, in turn, interconnect the various access switches. If the root is located at an access switch and the principal server utilized by the end stations (i.e., clients) is coupled to a backbone switch, the average distance between end stations and the primary server may be quite high, resulting in inefficient network operation. In addition, the backbone switches may become partitioned as ports between them are blocked. Id. at col. 3, ll. 17–29; see also id. at col. 10, ll. 26–29 (the “location of the root may affect the average distance (i.e., the average number of hops) a message travels and/or cause undesirable partitioning of backbone switches”). Thus, the location of the root is not an unimportant consideration—it affects the distance messages must travel and can cause backbone switches to be partitioned. See id. Gai, therefore, discloses that “[t]o reduce the average distance and avoid partitioning of the backbone switches, it is desirable to locate the root at a backbone switch.”10 Id. at col. 3, ll. 29–31 (emphasis added). Switch 117 in Petitioner’s modified Figure 1 is an access switch, not a backbone switch. See id. at col. 6, ll. 10–12 (“Access switches are preferably coupled to entities (e.g., LANs, end stations, etc.) whereas backbone switches provide the interconnections between access switches.”).” slip op. at 44

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

    “We agree with Petitioner. For purposes of claim 1, which does not recite “downstream” communication of dummy traffic (unlike claims 11, 12, 23, and 24), the only modification to Figure 1 is the addition of switch 117 and server 112e—otherwise, in Petitioner’s analysis, Gai’s method operates exactly as described when a failure occurs at root port 3 of switch 114. See Pet. 69–73, 81–85; Tr. 47:20–48:2. That modification is expressly supported by Gai, which discloses the following: Rapid reconfiguration entity 234 similarly generates one or more separate multicast messages 400 for each remaining entity directly coupled to access switch 114 (i.e., entities or end stations on LANs 102–104). In each message 400, entity 234 loads SA field 414 with the address of the corresponding entity. Each of these messages are similarly forwarded by access switch 114 through the new forwarding port (i.e., port number four). In addition, entity 234 generates and transmits one or more multicast messages 400 for entities reachable through switch 114 on ports other than its root port. For example, if port number seven at switch 114 were coupled to another access switch, entity 234 would transmit multicast messages 400 carrying the source address of entities directly coupled to this additional access switch as well. Thus, at least one multicast message 400 is generated and transmitted for each entity directly coupled to or downstream of access switch 114 (relative to the root). As set forth above, upon receipt of these multicast messages 400, the other devices within network 100 update their corresponding filtering databases with the new destination ports, as necessary. Ex. 1005, col. 13, l. 50–col. 14, l. 3 (emphasis added). Gai thus expressly contemplates the addition of “another access switch” coupled to port 7 of switch 114. Switch 117 in the modified Figure 1 is such a switch. See PO Resp. 30 (Patent Owner arguing that “a [person of ordinary skill in the art] would understand that switch 117 is an access switch”); Ex. 1018, 84:14–85:9 (Dr. Olivier agreeing that switch 117 is an “access switch”). And because an “access switch” has “ports that connect to LANs and/or to other network endpoints, such as user computer systems,” and the above disclosure mentions “entities directly coupled to th[e] additional access switch,” switch 117 would be directly connected to a device like server 112e as well. See Ex. 1001, col. 1, ll. 31–33; Ex. 1005, col. 13, ll. 59–63; supra Section II.B. We credit Dr. Houh’s testimony that Gai in its written description expressly discloses the particular “variation of the topology” of Figure 1 that Petitioner asserts. See Ex. 1003 ¶ 165. Third, Patent Owner argues that Petitioner has not established that a person of ordinary skill in the art “would have had a reasonable expectation of success in modifying Gai to meet the claims.” PO Resp. 14–16 (citing Ex. 2001 ¶¶ 47–49). Patent Owner’s arguments are primarily directed to Petitioner’s asserted modification for its “1A” theory. See id. To the extent Patent Owner’s arguments apply to claim 1 and “1B,” we disagree, as Gai expressly describes the asserted modification to Figure 1 (i.e., adding an access switch connected to port 7 of switch 114). Thus, we are persuaded that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving the method of claim 1 based on Gai’s full disclosure.” slip op. at 33

  Patent outcomesUS 6,917,986 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,917,986
• Xu Peicheng (Hong Kong) Optoelectronic Technology Co., Limited v. Semisilicon Technology Corp.Some claims unpatentable
  PTAB · May 14, 2025 · IPR2024-00156 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–3 and 8 are unpatentable over the stated obviousness grounds; claims 4–6 were not shown unpatentable because Hiroyuki does not teach the claimed terminal pins.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Relying on the Schubert Declaration, Petitioner proposes that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and 6 years of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes amendments to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application filed before March 16, 2013, we apply pre-AIA law. See Pet. 2; Ex. 1001, codes (22), (30). 2 US 2009/0021955 A1, published January 22, 2009 (Ex. 1004, codes (10), (43)) (“Kuang”). Petitioner contends that Kuang is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. 3 US 2012/0050606 A1, published March 1, 2012 (Ex. 1005, codes (10), (43)) (“Debevec”). Petitioner asserts that “[b]ecause Debevec was filed prior to the priority date of the ’546 patent, it qualifies as prior art at least under pre-AIA 35 U.S.C. § 102(e).” Pet. 2. 4 US 6,774,584 B2, issued August 10, 2004 (Ex. 1008, codes (10), (45)) (“Lys”). Petitioner contends that Lys is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2–3. 5 JP2006-228529, published August 31, 2006 (Ex. 1006, code (43)) (“Hiroyuki”). We refer herein to the certified English translation filed as Exhibit 1007. Petitioner contends that Hiroyuki is prior art to the ’546 patent at least under pre-AIA 35 U.S.C. § 102(b). Pet. 2. practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or “[a]lternatively . . . would have had a master’s degree and four years of experience, or a Ph.D. degree and two years of experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner applies Petitioner’s asserted level of ordinary skill in the art. PO Resp. 7–8. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’546 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16

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

    “The parties also dispute the interpretation of the term “synchronous signals” recited in claim 1, with the parties proposing these respective constructions: Petitioner’s Proposed Patent Owner’s Proposed Construction Construction “signals that are sent to the slave “signals related to activities governed by synchronized timing” nodes to control their corresponding LED strings at the same time.”” slip op. at 20

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

    “The “context” is typically evaluated by reviewing the intrinsic record. See e.g., Regeneron, 130 F.4th at 1380–84. Here, as discussed above, the ’546 patent has multiple disclosures where a curtain lamp has a single light-emitting diode in one light-emitting diode string. See Ex. 1001, 1:33–36, 6:15–20, 6:27–40, 8:25–45. In particular, the ’546 patent similarly discloses a first curtain lamp with one LED in one light string, as well as a second curtain lamp, which provides further support for Petitioner’s proposed interpretation. Id. at 8:25–45. Although Patent Owner argues that Figures 7 and 8 disclose multiple LEDs and light strings in curtain lamps, other embodiments and claims explicitly indicate single components in a “curtain lamp.” “[T]here is a strong presumption against a claim construction that excludes a disclosed embodiment.” See In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). Given that certain embodiments and claim 8 disclose a curtain lamp with one light string with one LED, we decline to interpret the claim to prohibit Petitioner’s interpretation. Additionally, we do not find that Petitioner’s claim interpretation renders the claim terms nonsensical or illogical. See Becton, 616 F.3d at 1255. Patent Owner asserts otherwise, arguing that Petitioner’s interpretation is based upon a “nonsensical” or “absurd[]” argument, there is no reason to have both a master and slave control unit to operate a single LED, and the interpretation renders most of the components superfluous. See PO Sur-reply 12; PO Resp. Supp. Br. 5. As discussed above, however, although the ’546 patent does not appear to provide any explanation for why there are master and slave control units to operate a single LED, the patent nevertheless discloses that in embodiments. This situation is also distinguishable from Becton, where “unequivocal language” of the claim recited “spring means ‘connected to’ the hinged arm,” such that interpreting the spring means and the hinged arm as the same structure would have rendered the claim nonsensical. Becton, 616 F.3d at 1254–55. Becton further found that interpreting the spring means and hinged arm as the same structure would be inconsistent with descriptions of the elements in the specification. Id. Here, in contrast, the ’546 patent Specification is replete with disclosures of a curtain lamp having one light string with one LED, and claim 8 is directed to the same. Accordingly, we adopt Petitioner’s interpretation of these claim elements.” slip op. at 36

  • Strike new argumentNew argument consideredDecided for petitioner

    “Although Patent Owner argues that Petitioner’s arguments in the Reply on “light strings” and “curtain lamp” as they relate to a single LED are improper, we do not agree. As Patent Owner acknowledges, the Petition and Dr. Schubert’s original declaration stated that a “curtain lamp” is “commonly understood to be one or more light strings.” See PO Sur-reply 12; see also Pet. 8; Ex. 1003 ¶ 37. Patent Owner did not contest Petitioner’s interpretation in its Response. See PO Resp. 15. Patent Owner did, however, argue that Kuang did not teach or suggest “light strings” in any form and therefore did not teach a “curtain lamp” under Petitioner’s definition of the same. PO Resp. 15–17. A petitioner reply may respond to arguments raised in a patent owner’s response under 35 U.S.C. § 42.23(b), and here Petitioner’s argument that a light string may have a single LED is properly presented in its Reply in response to Patent Owner’s arguments. Further, Patent Owner was not only aware that Petitioner had taken the position that a “curtain lamp” could be a single “light string,” but Patent Owner also did not dispute Petitioner’s interpretation.8 Our view, therefore, is that Petitioner’s argument that a curtain lamp may be a single LED is proper because it is corollary to Petitioner’s reply arguments on light strings. That is, Petitioner’s assertion follows from the reply arguments on light strings and the unopposed interpretation of curtain lamp as a single light string. Additionally, to the extent there could be any prejudice to Patent Owner by these light string and curtain lamp arguments, Patent Owner has had opportunities to address them by supplemental briefing.” slip op. at 32

  Patent outcomesUS 8,884,546 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,884,546
• Juniper Networks, Inc. v. Monarch Networking Solutions LLCSome claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00175 · APJ Norman H Beamer · IPR · Final written decision

  Claims 7, 9–11, 13, 14, 16, and 17 are unpatentable as obvious over Biswas and Kumar; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 14 (citing Ex. 1003 ¶¶ 62–64). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 8–9. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 10

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

    “Claim terms need only be construed 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). The parties submit that no claim construction is necessary. Pet. 14; PO Resp. 15. We have not been presented with the need to construe any claim terms for this Decision. D.” slip op. at 11

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

    “We determine that Petitioner has provided sufficiently articulated reasoning with rational underpinnings for the proffered combined teachings of Biswas and Kumar. We are persuaded by Petitioner’s declarant’s testimony that one of ordinary skill would have known to use the masking techniques exemplified by Kumar to implement the disclosed operation in Biswas of edge routers providing hosts with port number ranges. Ex. 1003 ¶¶ 77, 97–101. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Biswas and Kumar.” slip op. at 13

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

    “This disclosure is inconsistent with any suggestion that the Fangman system, when routing a telephone call to its destination, identifies the private IP address of the destination telephone by determining the port range to which the port number of the destination telephone belongs. When Fangman describes the NAPPT process, it does not indicate that port ranges are used, but rather repeatedly states that port numbers are used: The [service gateway] receives a data packet from the IP device, including a public destination IP address . . . a destination port number . . . and source information, NAPPTs the data packet, using the [public destination IP address] and the [destination port number] to identify the [IP telephone] . . . . Ex. 1024, code (57). Performing NAPPT on the data packet received from the destination may include using the public destination IP address and the destination port number to uniquely identify the IP telephone, and changing the public destination IP address to a private source IP address of the IP telephone while leaving the destination port number unchanged. Ex. 1024, 4:28–33. The SG 170 may maintain a table of semi-permanent mappings of the external IP address and ports to the internal hosts and ports. Ex. 1024, 8:49–51.” slip op. at 33

  Patent outcomesUS 8,693,369 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,369
• Whatfix Inc. v. Walkme Ltd.Some claims unpatentable
  PTAB · Mar 18, 2025 · IPR2023-01368 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–8, 12, 13, 16, 19–23, 26, 29, and 31 are unpatentable over Symons and Williams; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner proposes that a person of ordinary skill in the art (“POSITA”) “would have a bachelor’s degree in engineering or computer science and two years of experience working on NLP [natural language processing] and automation processes. Alternatively, a POSITA would have five to six years of experience working on NLP and automation processes.” Pet. 5–6 (citing Ex. 1003 ¶¶ 50–52). We adopted Petitioner’s proposal for purposes of the Decision on Institution, explaining that it appeared to be consistent with the evidence of record, including the asserted prior art and the ’664 patent. Dec. 12.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “We interpret claims using the same claim construction standard that would be used to construe the claims in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under that standard, words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). However, “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess, and “[i]n such cases, the inventor’s lexicography governs.” Id. at 1316. A patentee may “choose to be his or her own lexicographer by clearly setting forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning.” Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001). We only need to construe the claims to the extent necessary to resolve the parties’ disputes. See Realtime Data, LLC. v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 18

  • ExcludeGranted in part

    “Exhibits 2015–2017 are three comments made on the Internet in association with the Symons Article. These comments are also shown in Exhibit 2005. According to our rules, “[s]upplemental evidence is not filed at the time of the objection, but simply served, and is filed only in support of an opposition to a motion to exclude.” CTPG14 79 (citing 37 C.F.R. §§ 42.64(a), 42.64(b)(2)). Because no motion to exclude was filed by Petitioner, we agree with Petitioner that Patent Owner improperly filed Exhibits 2014–2017. However, as described above, the comments in Exhibit 2015–2017 are already part of the record in Exhibit 2005, and Petitioner has not filed a motion to expunge Exhibit 2005. Therefore, we are not aware of any harm to Petitioner by leaving these Exhibits in the record, as the information is 14 PTAB Consolidated Trial Practice Guide, November 2019 (the “CTPG”), available at: https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. already there. See Tr. 100:8–14. Moreover, retaining these Exhibits in the record will avoid confusion in the record and serve the public interest in a full and complete record. Accordingly, we will expunge only Exhibit 2018, as agreed by the parties, and waive the requirements of 37 C.F.R. § 42.64(b)(2) to the extent necessary to retain entry of Exhibits 2014–2017.” slip op. at 27

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

    “We need not determine whether Symons alone teaches this limitation, because we are persuaded that Petitioner has sufficiently shown that the combination of Symons and Williams teaches this limitation. We agree with Petitioner that, by disclosing that “chatbots can engage in natural language dialog with the caller and discern, through a series of interactions, the nature of the call[,] . . .capture information required to further handle the request . . [and] then trigger a robot, passing the required information to the robot to complete the request,” Williams teaches “determining . . . an automation process,” as recited in limitation 1[c]. See Pet. 19 (citing Ex. 1011, 3) (some emphasis omitted); see Ex. 1003 ¶ 95. We disagree with Patent Owner’s arguments that the combination is “ill-defined.” Sur-reply 8–9. Petitioner argues that the combination of Symons and Williams “results in a chatbot-RPA bot system capable of handling a user request for automated email signature generation along with other requests, such as automated generation of an electronic letterhead or an electronic invoice.” Pet. 20 (citing Ex. 1003 ¶ 98). In other words, in addition to the capability of handling the automated email signature generation (as taught in Symons), the combined chatbot-RPA bot system can handle other requests as well (as taught in Williams). Further, we agree with Petitioner that “[t]he ability to handle multiple requests would expand the capabilities and flexibilities of the chatbot-RPA bot” as well as “improv[e] costs, time, and capabilities.” Id. at 19–20 (citing Ex. 1003 ¶¶ 95, 96, 99). Both Symons and Williams support this argument. Ex. 1011, 2 (stating that RPA “support[s] repetitive, labor-intensive and transactional business processes,” that “software robots [are] an attractive way to drive operational cost reduction,” and that “[a]utomation through RPA can offer a return on investment (ROI) often ranging between 30 and 50 percent”); id. at 5 (stating that “[d]eployment of these cognitive tools promises new levels of productivity and innovation–freeing human workers to focus on higher-value activities and bringing industrial-level quality, consistency and auditability to business processes”); Ex. 1004, 2 (stating that “combining [RPA bots and chatbots] to automate processes can tremendously boost productivity in multiple organizations” and that “[RPA bots] reduce[] costs and human efforts”). Patent Owner’s argument that “[n]either Symons nor Williams suggest using a single chatbot-RPA to handle multiple requests at once in the same conversation thread” (PO Resp. 38) is not commensurate with the claim language, which does not require a single automation process (e.g., chatbot-RPA) to handle multiple inputs (e.g., multiple requests in the same conversation thread). See Reply 9–10. Regardless, however, we are not persuaded that Williams does not suggest using a single chatbot-RPA to handle multiple requests, as argued by Patent Owner. Sur-reply 9; see Ex. 1011, 2 (stating, for example, that “[t]he most common processes enabled by RPA today include back-office administrative processes and workflow within IT, finance, procurement, and human resources functions” and that “RPA enlists software robots to perform complex, nested routines that cut across multiple applications and interact with these systems”); id. at 3 (“Through several scripted questions, the virtual agent can surmise that the supplier is asking for status on their payment and, thus, trigger an RPA robot to access the appropriate enterprise resource planning (ERP) backend system, validate the caller’s details, retrieve necessary information, and provide status back in real-time to the supplier.”).” slip op. at 35

  Patent outcomesUS 10,819,664 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,819,664
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Zoho Corporation / Zoho Corporation PVT., Ltd. v. Meetrix IP, LLCSome claims unpatentable
  PTAB · Jul 16, 2024 · IPR2023-00379 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 9–16 are unpatentable as obvious over Drell, Knappe, and Elliott; claims 17–20 were not shown unpatentable because the petition did not establish the separately recited mixers in claims 17 and 18.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. Indeed, at the hearing, Patent Owner’s counsel stated “I can’t point to a material difference that would change the outcome of this.” Tr. 49:10–15. Therefore, it appears that neither party contends that the differences in their proposals affects the outcome of this proceeding. Nothing in the full record persuades us that our preliminary finding in the Institution Decision, adopting Petitioner’s proposal, was incorrect. See Paper 6, 9. Therefore, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’525 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 9

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

    “We agree with Petitioner that no claim construction is necessary for purposes of this Decision. That is, Patent Owner does not argue, and we do 5 Petitioner was not a party to this district court litigation. See Tr. 8:21–23 (Petitioner’s counsel stating “[w]e were not involved, Zoho was not involved in that claim construction process that resulted in the construction from the Western District of Texas.”). not discern, that any claim terms are in controversy on the current record.6 See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “We are persuaded that the combination of Drell and Knappe teaches limitation [9.6]. Patent Owner’s arguments improperly address Drell and Knappe individually, rather than the combination of Drell and Knappe on which Petitioner relies. See Soft Gel Techs., Inc. v. Jarrow Formulas, Inc., 864 F.3d 1334, 1341 (Fed. Cir. 2017) (attacking a reference individually does not show non-obviousness where petitioner’s ground is premised on the combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 31

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “combination of references); Reply 7. As described above, Petitioner provides extensive reasoning, supported by testimony from Dr. Houh, explaining how the combination of Drell and Knappe teaches limitation [9.6], and provides reasoning for why a person of ordinary skill in the art would combine the references. Patent Owner’s arguments largely do not address Petitioner’s contentions and fail to address Petitioner’s arguments in support of the combination. In addition, Petitioner supports its arguments with citations to the references and credible declarant testimony from the vantage of a person of ordinary skill in the art, while Patent Owner’s arguments as to the interpretation of the references and motivations (or lack thereof) of a person of ordinary skill in the art are insufficiently supported by testimony from the viewpoint of a person of ordinary skill in the art or citation to the references.9 See PO Resp. 18–19. We find Petitioner’s interpretation of the references and motivation to combine more persuasive than Patent Owner’s insufficiently supported attorney argument on these issues.” slip op. at 32

  Patent outcomesUS 9,094,525 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,094,525
• 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
• Qualcomm Incorporated / Zyxel Communications Corporation v. Unm Rainforest InnovationsSome claims unpatentable
  PTAB · Jul 15, 2022 · IPR2021-00734 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Talukdar and Li; claim 8 was not shown unpatentable over Talukdar and Nystrom. The motion to amend was granted.

  RulingsFinal written decision

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

    “7. Conclusion Patent Owner has shown: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed substitute claims are supported in the original disclosure; (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. Petitioner has not shown by a preponderance of the evidence that proposed substitute claims 44–47, 49, and 50 are unpatentable. Accordingly, Patent Owner’s Motion to Amend is granted.” slip op. at 82

  • ExcludeMotion to exclude, deniedDenied

    “Owner’s Motion to Exclude because Dr. Roy’s testimony should not be excluded under Federal Rules of Evidence 702 and 703. Rule “702 imposes a special obligation upon a trial judge to ‘ensure that any and all scientific testimony . . . is not only relevant, but reliable,’” which is a “basic gatekeeping obligation.” Kumho Tire Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993)). The policy considerations for excluding expert testimony, such as those implemented by Daubert’s gatekeeping framework, are less compelling in bench proceedings such as inter partes reviews than in jury trials because, unlike a lay jury, the Board has significant experience in evaluating expert testimony. Accordingly, the danger of prejudice in this proceeding would be considerably lower than in a lay jury trial and the wholesale exclusion of a witness’s declaration is rarely called for in a proceeding before the Board.” slip op. at 16

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

    “testimony (Ex. 1002), we are persuaded that Petitioner has set 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 modify Talukdar’s hybrid frame that includes a first section with data configured in 802.16(e) format for 802.16(e) fixed remote units and a second section that includes data configured in 802.16(m) format for faster moving 802.16(m) mobile remote units, because it would have provided the benefit of enabling the hybrid frame to accommodate data for a greater range of remote units within Talukdar’s wireless system. See Pet. 40–42; KSR, 550 U.S. at 421.” slip op. at 43

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “considerations before reaching our conclusion on obviousness as to the subject matter of claim 1. See WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). Patent Owner asserts that there is evidence of commercial success and licensing of the ’096 Patent to industry leaders in the wireless chip industry. See PO Resp. 53–54 (citing Exs. 2007–2010; IPR2020-01576, Ex. 1028 (confidential patent license agreement filed under seal)). Exhibit 2007 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-00468-ADA (W.D. Tex.). Exhibit 2008 is a notice regarding withdrawn claims entered in UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv- 00142-ADA (W.D. Tex.). Exhibits 2009 and 2010 are a joint motion to dismiss with prejudice, and an order of dismissal, respectively, entered in UNM Rainforest Innovations v. Apple Inc., No. 1:20-cv-00351 (W.D. Tex.). A copy of IPR2020-01576, Ex. 1028 has not been entered in the record of” slip op. at 49

  Patent outcomesUS 8,265,096 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,265,096

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.