• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision

  Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyDecided for patent owner

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18

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

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  Patent outcomesUS 10,225,479 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,225,479
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

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

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

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

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

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

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• K/S Himpp v. III Holdings 4, LLCNo claims unpatentable
  PTAB · Jun 28, 2018 · IPR2017-00496 · APJ James T Moore · IPR · Final written decision

  Claims 1–17 were not shown unpatentable under § 103 over Topholm and Michael because the cited art did not teach adjusting a hearing aid profile.

  RulingsFinal written decision

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

    “The problem we find with this position is that the Petitioner is reading claim elements into the description of these references. Patent Owner points out that the profiles are not being adjusted, but rather being selected from twenty-four previously stored profiles. Resp. 30–31. While the ear module operational profile changes, we observe that this is because it is using a different profile, which was just uploaded from the control unit. The act of moving the finger around on the screen to us perhaps appears to change the profile, when it is in fact moving through a set of preexisting profiles and uploading them to the hearing aid instead, changing operation of the hearing aid itself but not adjusting the profile itself. Michael states: This permits the user to select a hearing profile by simply moving visual indicator 924 over main region 922 while listening to a sound stream broadcast by ear 35 module 10; the sound stream being heard by the user reflects the hearing profile corresponding to the current position of the visual indicator 924 in real-time. Ex. 1005, 8:32–37.” slip op. at 21

  • Expert testimonyPetitioner expert creditedOther

    “4 Petitioner also relies upon the declaration testimony of Dr. Robert E. Morley, Jr. (Ex. 1002). Both references appear to be prior art under 35 U.S.C. § 102(b). We find Dr. Morley, by virtue of his education and experience, qualified to testify to the subject matter of this proceeding. Ex. 1002 ¶¶ 2–14 and Exhibit A thereto. We are cognizant of Patent Owner’s suggestion that we give his testimony “little, if any, weight” because of the similarity of the testimony with Petitioner’s arguments and discrepancies between it and his deposition testimony. PO Resp. 34–36. We give Dr. Morley’s testimony appropriate contextual weight herein based upon the content of the testimony itself, and any contrary testimony in Exhibit 2006. We decline to assign generally no weight to his testimony, however.” slip op. at 3

  • Skill levelSkill level petitioner adoptedOther

    “These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,”5 (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long felt but unsolved needs, failure of others, etc.”6 KSR, 550 U.S. at 406 (quoting Graham, 383 U.S. at 17–18). 5 Petitioner defines the level of ordinary skill in the art as someone with a B.S. degree in electrical or computer engineering, or the equivalent, and at least two years of experience in the design of audiological products. Pet. 7-8 (citing Ex. 1002, ¶ 32). Patent Owner does not challenge this level. PO Resp., passim. The references in the record tend to support a finding that this is the appropriate level.” slip op. at 12

  Patent outcomesUS 8,761,421 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,761,421
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-01690 · APJ Scott C Moore · IPR · Final written decision

  Petitioners failed to prove claims 1–10, 15, 20, and 24 unpatentable because they did not show a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Notably, Dr. Creusere never opines that a person of ordinary skill in the art would have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present, in the manner Petitioners allege would have satisfied claim limitations 1f and 24f. See ’179 IPR, Ex. 1002 ¶¶ 141–146, 191–202; ’808 IPR, Ex. 1002 ¶¶ 141– 146, 191–202. In fact, during his deposition, Dr. Creusere confirmed that he was not offering an opinion that a person of ordinary skill in the art would have refrained from calculating Hsu’s block type and redundancy metrics when Franaszek’s “type” information was not present: Q. And in your declaration, you don't propose that a POSA would only use Hsu when Franaszek already has a data type and not use Hsu when Franaszek doesn't have a data type, right? A. I don't propose that a POSA has to do that. Though I do discuss the advantages that one could achieve if one had a data type, and one were to combine that with Hsu, but I don't say -- I don't say that you can only apply Hsu when you -- when you have a data type. Q. You don't have an opinion that a POSA would have been motivated to use Hsu only when Franaszek has a data type, but would not have been motivated to use Hsu when Franaszek doesn't have a data type, right? A. I don't believe that I expressed an opinion on that in my declaration. Ex. 2003, 130:18–131:12 (emphases added).” slip op. at 26

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00808 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to forgo Hsu’s analysis when Franaszek lacked type information.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “In contrast, Patent Owner’s declarant, Dr. Zeger, directly addresses the issue in dispute, and testifies that a person of ordinary skill in the art would not have had reason to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type data was not present: While I do not agree that a POSA would be motivated to combine Franaszek with Hsu at all, I do agree with Dr. Creusere that if a POSA were to make such a combination, the POSA would rely on Hsu’s powerful data type recognition and compressibility analysis approach to identify a data type and redundancy metrics for each of Franaszek’s data blocks. I also agree with Dr. Creusere’s testimony that using Hsu in such circumstances would help Franaszek “pick a better compression technique and get more compression.” Id. at 130:12-17. I certainly do not believe that a POSA would want to refrain from using Hsu’s powerful data type recognition and compressibility analysis approach when Franaszek lacks data type information. To the contrary, Hsu describes a system that avoids any content independent compression and that instead uses an entirely content-dependent approach, and its teachings are thus heavily directed toward an approach for always identifying a data block’s data type as well as its three redundancy metrics. Thus a POSA would have to disregard a core aspect of Hsu’s teachings in order not to use Hsu when Franaszek lacks a data type. I agree with Dr. Creusere that a POSA would not take such an approach. It would certainly not be obvious for a POSA to do so. Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / EMC Corporation et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 25, 2018 · IPR2017-00179 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10, 15, 20, and 24 were not shown unpatentable because Petitioners did not establish a reason to refrain from calculating Hsu’s metrics when Franaszek’s type information was absent.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “and “at least two years of experience working with data compression or a graduate degree focusing in the field of data compression.” ’179 IPR, Ex. 1002 ¶ 26; ’808 IPR, Ex. 1002 ¶ 26. Patent Owner’s declarant, Dr. Zeger, “does not disagree” with Petitioners’ formulation, and does not offer any alternative formulation. See Ex. 2004 ¶ 20. Based on our review of the ’728 patent, the types of problems and solutions described in the ’728 patent and cited prior art, and the testimony of Petitioners’ declarant, we adopt and apply Dr. Creusere’s formulation regarding the level of ordinary skill in the art. The cited prior art references also reflect the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We find that the level of appropriate skill reflected in these references is consistent with Dr. Creusere’s formulation regarding the level of ordinary skill in the art.” slip op. at 11

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

    “Petitioners requested that we construe the claim term “the data block being included in one or more data blocks,” which is recited in claims 2 and 3. ’179 Pet. 13, ’808 Pet. 11–12. Patent Owner did not request that we provide explicit constructions of any claim terms. On this record, we determine that it is unnecessary to provide an explicit construction of the claim term “the data block being included in one or more data blocks” in order to resolve the issues in dispute. Accordingly, we decline to adopt an express construction of this claim term. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ex. 2004 ¶ 24. We find Dr. Zeger’s testimony persuasive, especially in view of Dr. Creusere’s deposition testimony that advantages would result from using Hsu’s block type and redundancy metrics, regardless of whether Franaszek’s type data was or was not present.” slip op. at 28

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

    “Petitioners argue that Patent Owner is “presuppos[ing] that a POSA would only see one obvious way to combine prior art teachings.” Reply 5. Petitioners are correct that there may be more than one obvious way to combine prior art teachings. However, it is Petitioners’ burden to show that one particular combination of the references renders obvious all limitations of a given claim. Thus, it is entirely proper for Patent Owner to point out the tension between Petitioners’ stated rationale for combining the teachings of Hsu and Franaszek to arrive at limitations 1d and 24d, and Petitioners’ stated rationale for further modifying this combination to refrain from calculating Hsu’s block type and redundancy metrics when Franaszek’s type information is not present in order to arrive at limitations 1f and 24f. To prevail on Ground 1, Petitioners must demonstrate that a person of ordinary skill in the art would have had sufficient reason to make both modifications. We find Petitioner has not persuasively harmonized the disparate rationales it proffers.” slip op. at 29

  Patent outcomesUS 9,054,728 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 9,054,728
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 15, 2018 · IPR2017-00365 · APJ Per Curiam · IPR · Final written decision

  Claims 1–5, 9–12, 14, 18, 19, and 24 were not shown unpatentable under § 103 because Petitioner failed to establish a specific combination with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices.” slip op. at 18

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89.” slip op. at 17

  Patent outcomesUS 7,415,530 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,415,530
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 15, 2018 · IPR2016-01671 · APJ Christopher L Crumbley · IPR · Final written decision

  Petitioner failed to prove claims 1–5, 9–12, 14, 18, 19, and 24 unpatentable as obvious because it did not establish a specific combination with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not observe a meaningful difference between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 8

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89. Instead, Petitioner simply asserts, in a conclusory manner, that: Because the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention. Pet. 34 (emphasis added)(citing Ex. 1002 ¶¶ 169–71). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3.” slip op. at 17

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” evidentiary burden. Pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009), it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.” Id. at 1359–60 (quoting In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988); see also Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“[O]bviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, as the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1 and 24 by instead repeating that “model[ing], simulat[ion], and test[ing]” leads to a reasonable expectation of success (Pet. 34); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner attempts to craft a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Zeger. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–69. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

  Patent outcomesUS 7,415,530 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,415,530
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · May 15, 2018 · IPR2016-00972 · APJ Christopher L Crumbley · IPR · Final written decision

  Petitioner did not prove claims 1–5, 9–12, 14, 18, 19, and 24 unpatentable under § 103 because it failed to show a specific combination with a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and citation omitted). In that regard, Petitioner’s declarant, Dr. Creusere, testifies that a person with ordinary skill in the art at the time of the invention would have had at least a bachelor’s degree in computer science, computer engineering, electrical and computer engineering, electrical engineering, or electronics and at least two years of experience working with data compression or a graduate degree focusing in the field of data compression. Such experience would have led to familiarity with data compression systems using multiple data compression and decompression techniques to increase data storage and retrieval bandwidth. As such, individuals with additional education or additional industrial experience could still be of ordinary skill in the art if that additional aspect compensates for a deficit in one of the other aspects of the requirements stated above.” slip op. at 7

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

    “broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, and absent any special definitions, we give claim terms their ordinary and customary meaning, as would be understood by one of ordinary skill in the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 5–6. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

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

    “reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the recited invention does. And as the Federal Circuit elaborates in ActiveVideo (supra), this analysis involves consideration of how specific references could be combined, which combination(s) of elements in specific references would yield a predictable result, or how any specific combination would operate or read on the asserted claims. We find Dr. Creusere’s testimony is insufficient under the aforementioned requirements under ActiveVideo. In particular, Dr. Creusere acknowledges that he does not specify whether a person having ordinary skill in the art would keep or discard Franaszek’s sampling approach, or would use only Franaszek’s compression algorithms or incorporate other algorithms. Ex. 2015 at 75:18–76:11, 126:20–127:1. Also significant is Dr. Creusere’s repeated testimony that a person having ordinary skill in the art would not incorporate Osterlund’s compression algorithm into Franaszek, or incorporate Franaszek’s compression algorithms into Osterlund. Id. at 43:3–11, 94:13–95:4. Furthermore, Dr. Creusere did not have an opinion about whether using Osterlund’s compression algorithm as part of Franaszek’s compression method would increase Franaszek’s compression speed. Id. at 94:4–12. Moreover, Dr. Creusere could not state whether his hypothetical person having ordinary skill in the art would modify Franaszek’s set of existing compression techniques at all, and, if so, what techniques the person having ordinary skill in the art would even consider. Id. at 96:4–98:14. Also notable is Dr. Creusere’s failure to indicate whether combination of the teachings of Franaszek and Osterlund would apply to some data types or all data types. Id. at 142:5–10, 143:12–19. Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 154–71; Ex. 2017 ¶¶ 187–89.” slip op. at 16

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168– 69), on this record, we cannot reconcile these portions of his declaration Dr. Creusere’s his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 168–69), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, nor Dr. Creusere’s declaration, nor his deposition testimony, provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices.” slip op. at 18

  Patent outcomesUS 7,415,530 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,415,530
• Dell Inc. / Riverbed Technology, Inc. et al. v. Realtime Data LLCNo claims unpatentable
  PTAB · Oct 31, 2017 · IPR2017-00364 · APJ Jason J Chung · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4–6, 9, 11, 21, 22, 24, and 25 unpatentable because it did not establish a reasonable expectation of success combining the cited references.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner confirms that Petitioner’s statements regarding the level of ordinary skill in the art are partially consistent with Patent Owner’s view, but, nonetheless, Patent Owner contends that an ordinarily skilled artisan would be the “ultimate generalist.” Ex. 2017 ¶¶ 16–17 (citing Ex. 2015, 84:13–20). We do not observe a meaningful differences between the parties’ assessments of a person of ordinary skill in the art. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Moreover, Dr. Creusere appears to satisfy either assessment. Our analysis in this Decision is supported by either assessment, but, for purposes of this Decision, we adopt Petitioner’s assessment.” slip op. at 7

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

    “The parties do not argue a claim construction for any terms. See generally PO Resp.; Reply. In the Decision to Institute, we did not construe any terms. Dec. 4–5. We determine that no terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those claim terms or phrases that are in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite number of identified, predictable solutions,’ and ‘merely throwing metaphorical darts at a board’ in hopes of arriving at a successful result.”). Furthermore, the Federal Circuit explained in Kubin, the Board should not use hindsight based on allegations that require that the person having ordinary skill in the art to randomly pick from a board filled with combinational prior art possibilities. Kubin, 561 F.3d at 1359. To paraphrase, Petitioner is attempting to bypass its evidentiary burden of having to proffer particular evidence of a specific combination, which would teach the “faster than” limitation recited in claims 1, 21, and 25 by instead repeating that “modeling, simulation, and testing” leads to a reasonable expectation of success (Pet. 28); whereas, in this proceeding, the number of permutations and variables are “unlimited” and “impossible” to address, as acknowledged by Dr. Creusere (Ex. 2015, 81:21–83:24, 84:13– 24, 143:20–144:3). That is, Petitioner’s attempt at crafting a theory of obviousness using non-specific teachings from Franaszek and Osterlund that allegedly demonstrate a reasonable expectation of success; this attempt, however, falls significantly short of the Federal Circuit’s requirements. Another obstacle to our reliance on Dr. Creusere’s vacillating opinions is Patent Owner’s declarant, Dr. Kenneth A. Zeger, Ph.D. Dr. Zeger opines in his declaration that Franaszek illustrates complex choices a person having ordinary skill in the art would face in considering whether and how to modify Franaszek in light of Osterlund on this record. Ex. 2017 ¶¶ 152–169. In particular, Dr. Zeger opines that Franaszek’s approach requires numerous steps that each create delays before compression occurs, which are illustrated in Dr. Zeger’s figure below. Id.” slip op. at 18

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

    “Put another way, we do not find that Petitioner demonstrates a “reasonable expectation of success” when Dr. Creusere acknowledges that a person having ordinary skill in the art did not specify whether to discard or keep Franaszek’s sampling approach, or would use only Franaszek’s teachings of compression algorithms, or incorporate other such algorithms, or what data type or data types an intended system teaches would be created to compress, or what specific goals and objectives the person having ordinary skill in the art would have had reason to achieve. Compare id. at 75:18–76:19, 126:20–127:1, 76:24–78:6, 94:4–12, 96:4–98:14 with Ex. 1002 ¶¶ 121–134; Ex. 2017 ¶¶ 165–167. Instead, Petitioner simply asserts, in a conclusory manner, that “[b]ecause the relevant art is predictable and compression algorithms and transmission times may be modeled, simulated, and easily tested, a person of ordinary skill in the art would have had a reasonable expectation of success in combining these various teachings found in the prior art to arrive at the claimed invention” (emphasis added). Pet. 28 (citing Ex. 1002 ¶¶ 131–132). Notably, Dr. Creusere acknowledges that the number of possible permutations faced by a person having ordinary skill in the art would have been “unlimited” and that it was “impossible” for him to address “all the permutations of those possibilities.” Id. at 81:21–83:24, 84:13–24, 143:20– 144:3. Although Dr. Creusere opines that a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131– 132), on this record, we cannot reconcile paragraphs 131–132 of his declaration when faced with the plethora of his own testimony on cross-examination to the contrary, such as his acknowledgement of “unlimited” permutations that were “impossible” to address. E.g., Ex. 2015, 81:21– 83:24, 84:13–24, 143:20–144:3. Stated differently, in his initial position, Dr. Creusere testifies a person having ordinary skill in the art would have a reasonable expectation of success (Ex. 1002 ¶¶ 131–132), while his later testimony vacillates to a stance that makes it difficult to demonstrate a reasonable expectation of success–– i.e., the existence of “unlimited” permutations that were “impossible” to address. Ex. 2015, 81:21–83:24, 84:13–24, 143:20–144:3. We find this testimony contradictory. In summary, neither the Petition, Dr. Creusere’s declaration, nor his deposition testimony provide any indication as to how a person having ordinary skill in the art would select among the countless permutations or further narrow the set of choices. Petitioner’s modeling, simulation, and testing theory fails to satisfy sufficiently its “reasonable expectation of success” theory evidentiary burden pursuant to the Federal Circuit’s decision in In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009) (it is “improper” to argue an obviousness theory on the basis that “it would have been ‘obvious to try’ . . . to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result.”). Leo Pharm. Prod., Ltd. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013) (“obviousness law in general recognizes an important distinction between combining known options into ‘a finite” slip op. at 17

  Patent outcomesUS 9,116,908 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,116,908

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.