• 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
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Jul 6, 2026 · IPR2025-00191 · APJ Michael T Cygan · IPR · Final written decision

  Claims 3, 8, 11, 12, and 19 are unpatentable under §103; Petitioner did not show claims 6, 9, 10, 13–18, and 20 unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the critical time “would have had a Bachelor of Science degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶34–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. Patent Owner does 5 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 100; PO. Resp. circuit design. PO Resp. 9–10 (citing Ex. 2021 ¶ 35). Neither Patent Owner nor Dr. Campbell considers the obviousness of the claims to turn on the precise definition of the level or ordinary skill in the art. PO Resp. 10; Ex. 2021 ¶ 35. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’322 patent and the prior art of record.” slip op. at 7

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

    “C. Claim Construction Neither party proposes any express claim construction. Pet. 27 (stating claims should receive their “plain and ordinary meaning”); PO Resp. 10 (stating that Petitioner’s challenges fail “under any reasonable construction”). In an inter partes review, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). We determine no terms require express construction for purposes of this Decision.” slip op. at 8

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

    “We determine that such a configuration would be neither inoperable nor significantly undesirable. Dr. Campbell testified that he does not argue that this configuration would be inoperable. Ex. 1106, 74:12–17; Ex. 2021 ¶60. Dr. Lee testifies that this configuration is “consistent with Nishikawa[123]’s Figure 14B.” Ex. 1105 ¶ 13. Dr. Lee further testifies that this configuration would not necessarily require a larger footprint, but instead, “could simply replace the trenches, abutting the device edge.” Id. Dr. Campbell testified that if the circular TAC replaced the rectangular trench, “I don’t know what it would be or exactly where it would be,” and therefore, “I can’t say what the size of the red circle would have to be.” Ex. 1106, 83:19–84:3. Therefore, the record does not support finding a circular TAC to have a larger footprint. Absent a larger footprint, there is no evidence that the end-connected TAC would be undesirable.” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “nor significantly undesirable. Dr. Campbell testified that he does not argue that this configuration would be inoperable. Ex. 1106, 74:12–17; Ex. 2021 ¶60. Dr. Lee testifies that this configuration is “consistent with Nishikawa[123]’s Figure 14B.” Ex. 1105 ¶ 13. Dr. Lee further testifies that this configuration would not necessarily require a larger footprint, but instead, “could simply replace the trenches, abutting the device edge.” Id. Dr. Campbell testified that if the circular TAC replaced the rectangular trench, “I don’t know what it would be or exactly where it would be,” and therefore, “I can’t say what the size of the red circle would have to be.” Ex. 1106, 83:19–84:3. Therefore, the record does not support finding a circular TAC to have a larger footprint. Absent a larger footprint, there is no evidence that the end-connected TAC would be undesirable.” slip op. at 15

  Patent outcomesUS 11,581,322 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,581,322
• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

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

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

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

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Oct 23, 2025 · IPR2024-00790 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Kim; claims 4 and 5 were not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “SuperGuide, 358 F.3d at 875 (“We review the patent’s written description and drawings to confirm that the patentee’s own use of the disputed term is consistent with the meaning given to it by the court.”). The ’031 patent teaches that dielectric pairs of different tiers are etched to form staircases extending along the x-y plane. Ex. 1001, 13:27–28. As described above (§ I.D, supra), dielectric filling structure 311 is formed by depositing a dielectric filling material to fill the space remaining after portions of dielectric stack 203 are removed to form staircase structure 303. Id. at 13:36–41; see also id. at 22:63–65 (“Memory structure 1200 can be formed by forming dielectric filling structure 1201 to fill the space formed by the removal of portions of dielectric stack 1003.”) The ’031 patent then teaches that excess dielectric filling material overlying the topmost surface of staircase structure 303 is removed using a suitable planarization method. Id. at 13:41–44; see also 22:67–23:5 (performing a planarization process to remove excess dielectric filling structure 1201 over the top surface of memory structure 1200). According to the ’031 patent, the portion of the deposited dielectric filling material that remains “over staircase structure 303 and isolation layer 109” forms “dielectric filling structure 311 that surrounds staircase structure 303.” Id. at 13:44–48 (emphasis added); see also id. at 1:56–58 (stating in “some embodiments, the memory device also includes a filling structure surrounding the multiple-stack staircase structure”). structure is etched along the x-, y-, and z-axes, and the dielectric filling structure fills the spaces in the x-, y-, and z-directions created when the staircase structure is etched. Because the excess portion of the dielectric filling structure overlying the top of the staircase structure is removed, what remains is dielectric filling structure in the spaces around the staircase structure in the x-, y-, and z-planes. In this way, the ’031 patent teaches that the dielectric filling structure surrounds, i.e., is all around or encircles, the staircase structure.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a bachelor of science degree in electrical engineering or a similar discipline” with “2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices,” or “an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 22–23. Petitioner further contends that a “POSITA would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. at 23 (citing Ex. 1003 ¶¶ 41–44). Patent Owner states that it does not object to the definition of a POSITA proffered by Petitioner. PO Resp. 13–14 (citing Pet. 22). In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’031 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 7

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

    “Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner

    “Dr. Banerjee adequately explains why a POSITA would have been motivated to make dummy structures DS with a conductive core as Petitioner proposes. In an obviousness analysis, some kind of reason must be shown as to why a POSITA would have thought of combining or modifying the prior art to achieve the patented invention. See Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). Here, Petitioner offers only the general proposition that pillar support structures comprising electrically conductive material were known in the art, but this does not provide a reason why a POSITA would have been motivated to modify Kim’s dummy structures. Pet. 55–56; Ex. 1003 ¶¶ 156–157. Petitioner’s arguments and Dr. Banerjee’s testimony with respect to the modification of Kim leaves an analytical gap that does not apprise us of why a POSITA would have modified Kim’s dummy structures to include a conductive core as the pillar-support material recited in claim 4. Instead, Petitioner attempts to imbue a POSITA with the knowledge of the claimed invention, when no prior art reference, references of record, or other evidence conveys or suggests that knowledge. Petitioner’s argument that a POSITA would have modified Kim in this way appears to be premised on Petitioner’s knowledge of the ’031 patent disclosure. This is improper hindsight reasoning. Petitioner needed to explain sufficiently what invention to consider modifying Kim’s dummy structures to include a conductive core. Petitioner fails to provide such an explanation. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (In an obviousness analysis, we must “cast the mind back to the time the invention was made” and “occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the thenaccepted wisdom in the art.”).” slip op. at 23

  Patent outcomesUS 10,868,031 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,868,031
• Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Some claims unpatentable
  PTAB · Oct 22, 2025 · IPR2024-00794 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1 and 6 are unpatentable over Park; claims 2–5 and 7–11 were not shown unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had a bachelor’s degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 19 (citing Ex. 1003 ¶¶ 36–37). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not object to this assessment, arguing that its claims are valid regardless of the precise definition. PO 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. skill, as it appears to be consistent with the specification of the ’623 patent and the prior art of record.” slip op. at 5

  • Expert testimonyPetitioner expert discountedMixed

    “the Petition, Petitioner’s approach to Shibata’s drive circuit and Park’s dummy channel/open region teachings results in a deficiency in its showing of reasonable expectation of success for its expressed combination of extending Park’s insulative trenches to replace some of its common source lines. Petitioner relies solely on the fact that the references are capable of performing the relied-upon functions or could possess the relied-upon structure. See, e.g., Pet. Reply 19–20 (stating, “If Shibata accommodates this type of trench . . . there is no reason Park cannot as well,” and “Park itself already presents a variety of ways to minimize any etching problem that may be encountered when using wet etching”). But Park does not describe its dummy channel or open region teachings as generally applicable to all of its embodiments. And Petitioner needs to show a reason why the application of Shibata would be reasonably expected to have been successfully applied in Park, not merely state that there is “no reason” to expect that it would not be successful. See DSS Tech. Mgmt., Inc. v. Apple Inc., 885 F.3d 1367, 1377 (Fed. Cir. 2018) (finding that even where two structures have “the same physical structure,” applying the teachings of one structure to the other requires “additional, reasoned analysis.”). The knowledge of one skilled in the art cannot bridge this gap, because these are inventive features of Park and Shibata. Furthermore, Petitioner also has not sufficiently explained, for any of its proposed augmentations, how metal gate deposition would occur sufficiently in the most remote regions of the long, parallel insulating layers in Petitioner’s Park-Shibata combination of such regions to avoid the risk of incomplete gate electrode layers in the final memory device that Patent Owner argues would result in a significant trade-off in memory device accuracy, and device scalability. PO Resp. 68 (citing Ex. 2010 ¶ 145). For example, Dr. Lee addresses only etching issues, not deposition issues. Ex. 1025, ¶¶ 32–47.” slip op. at 46

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

    “We agree with Petitioner. As pointed out by Patent Owner, the “trenches formed in the BSG” language of claim 1 reflects specific description of the gate-first method of manufacturing, but not the gate-last method of manufacturing. Ex. 1001, 7:17–19 (“referring to Fig. 1A, one or more first dielectric trenches . . . are formed in the one or more BSGs”). However, as Petitioner points out, the claims are to a memory “device,” not to a method of manufacturing or a device produced by specific manufacturing steps. Pet. Reply 1. During prosecution of the application that matured into the ’623 patent, the Examiner determined that the device of claim 1 was distinct from a separately claimed method of manufacturing and The Examiner’s requirement stated that the memory device of claim 1 is not limited by the disclosed process of manufacture because “the process claims require . . . deposition steps of polysilicon whereas the product claims do not require any polysilicon.” Id. Applicant agreed “without traverse” with the Examiner’s determination and selected to pursue only the “device” claims. Id. at 596 (“Applicant elects, without traverse, Invention I, Claims 1–11, drawn to a device”).4 The distinctiveness is also supported by the discussion in the ’623 patent of “formed in the BSG” that describes its device separately from its method of formation. The ’623 patent describes that “[i]n the disclosed memory device, one or more first dielectric trenches are formed in the BSG and extend in a length direction of the substrate to separate the BSG into a plurality of sub-BSGs.” Ex. 1001, 2:25–28. This description precedes, and is separate from, its description of an aspect of a process for manufacturing a memory device in which the BSG layer is formed and then “dielectric trenches are formed” that may “pass through the BSG layer” so that the “BSG layer is separated by the one or more first dielectric trenches into a plurality of sub-BSG layers.” Id. at 3:30–45. The description of the device having trenches formed in the BSG, which is not limited to a particular manufacturing process, further supports Petitioner’s contention that the “formed in the BSG” language is not limited to a particular manufacturing embodiment.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner

    “We do not agree that such arguments support Patent Owner’s conclusion. Patent Owner acknowledges that two portions of a BSG that are connected at a small opening are not separated because both portions remain electrically connected to each other. Id. at 17 (stating, “common source regions 52a is merely in the middle of a single sub-BSG 2 (‘SUB-BLK2’) and does not divide it into further sub-BSGs because there is an H-cut 72 that connects the two sides of the common source region such that both regions are part of the same sub-BSG”) (citing Ex. 1001, 9:15–19, 9:41–44) (emphasis omitted); Ex. 1026, 34:4–15, 41:23–42:16 (Dr. Kuhn attesting that common source regions may isolate adjacent BSGs). Patent Owner considers other portions of the BSG to be separated into sub-BSGs because there is no such connection between the sub-BSG portions. Id. at 17–18 (annotating Ex. 1001, Fig. 1B). Under such reasoning, the addition of a trench closing a gap between two neighboring BSG portions, thereby breaking the electrical connection therebetween, would “separate” the two BSG portions into further sub-BSGs. In its obviousness assertions, Petitioner argues for such an interpretation of the claim. See Pet. Reply 10 (“Park’s layers 111 electrically separate its BSG”). Based on the above, we determine that the phrase “dielectric trenches formed in the BSG and extending in a length direction of the substrate to perform electrical separation between sub-BSGs, but does not require that the trenches act alone, extending from one end of the device to the other across the entire BSG. Similarly, the trenches need not have any particular length, and need only to have some length that performs that separation.” slip op. at 13

  Patent outcomesUS 10,950,623 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,950,623
• 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
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jan 16, 2025 · IPR2023-01027 · APJ Aaron W Moore · IPR · Final written decision

  Claims 37–70 are unpatentable: claims 37–41, 47, 50–56, 58–59, 60–62, 64–65, and 70 as anticipated by Alden; the remaining challenged claims as obvious over Alden and the listed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). 3 PCT Patent App. Pub. No. WO 01/70538 A2 (Exhibit 1010). 4 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 5 U.S. Patent No. 4,970,628 (Exhibit 1007). 6 U.S. Patent No. 6,144,158 (Exhibit 1008). 7 U.S Patent No. 6,049,749 (Exhibit 1009). 8 PCT Patent App. Pub. No. WO 02/04247 A1 (Exhibit 1011). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (PO Resp. 4), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 9

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

    “Claim Construction We construe claims using the standard that would be applied in a civil action under 35 U.S.C. § 282(b), giving terms their ordinary and customary meaning to one of ordinary skill in the art in view of the specification and prosecution history. See 37 C.F.R. § 42.100(b). The Petition asserts that all claim terms should be given their “ordinary and customary meaning.” See Pet. 8. Patent Owner also proposes that the claim terms be given their ordinary meaning, and identifies the “ordinary meaning” for the terms “identify,” “turn,” and “curve,” which we discuss in our analysis below. We otherwise find that that no express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8

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

    “Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,941,830
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15

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

    “10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18

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

    “Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64

  Patent outcomesUS 9,369,081 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,369,081

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.