• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentable
  PTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. The level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA does not change our analysis or conclusions.” slip op. at 5

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

    “on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6

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

    “c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 26–29; Sur-reply 21.” slip op. at 8

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

    “All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15

  Patent outcomesUS 10,123,074 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,123,074
• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.No claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01223 · APJ Garth D Baer · IPR · Final written decision

  Claims 34–37 and 40–46 were not shown unpatentable because Suzuki’s organic barrier layer was not shown to meet the agreed construction of “planarization layer.”

  RulingsFinal written decision

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

    “layer of material that planarizes such that the propagation of defects from one layer to another layer can be interrupted and the topography of the underlying layer and/or structure is not reproduced.” PO Resp. 10. According to Patent Owner, we should adopt this construction because the parties agreed to it in a related district court proceeding and it is supported by the intrinsic evidence. Id. at 10–14. Petitioner does not dispute this 1 Japanese Published Application No. H09-245964, Pub. Sep. 19, 1997 (Ex. 1010, “Kijima”) (English translation). 2 US 6,198,217, Pub. Mar. 6, 2001 (Ex. 1012, “Suzuki”). 3 US 6,087,196, Pub. July 11, 2000 (Ex. 1013, “Sturm”). 4 WO 2001/08242, Pub. Feb. 1, 2001 (Ex. 1016, “Duthaler”). 5 Japanese Published Application No. H10-41069, Pub. Feb. 13, 1998 (Ex. 1014, “Fujimori”) (English translation). construction. Paper 33, 6:17–8:1; see Pet. Reply 5. We adopt the parties’ agreed-to construction.” slip op. at 4

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

    “Petitioner argues Suzuki’s organic barrier layer does not reproduce the underlying layer’s/structure’s topography because “Suzuki’s organic barrier layer 20 ‘makes a smooth surface on the relatively irregular surface of the cathode 18.’” Pet. Reply 7 (quoting Ex. 1012, 5:59–67). We disagree. Instead, we agree with Patent Owner that Suzuki’s irregular-surface smoothing describes covering defects, not suppressing the underlying cathode’s topography. PO Sur-reply 5. The smooth-surface passage that Petitioner highlights comes immediately after two sentences describing inevitable “defects,” “pinholes,” and “foreign matter” on the cathode surface and before a sentence describing “ensuring the formation of the layer 22, which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “G. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. We agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 6

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “which is substantially defect-free.” Ex. 1012, 5:52–67. Suzuki’s organic barrier 20 “makes a smooth surface” by covering defects because the defects are the only source of the “irregularity” that Suzuki refers to here. Id. We note Mr. Humphrey’s testimony, which we credit in this regard, that the “defects are created incidentally on the surface of the underlying layer and are generally not considered to be part of the underlying layer’s topography, which is a macroscopic property by design” and that the organic layer is not a planarization layer because it would reproduce the topography of the underlying layer. Ex. 2018 ¶¶ 47–48. Because the parties’ agreed-to construction of “planarization layer” “requires ‘a layer of material that planarizes’ for two distinct functions,” Petitioner’s showing of just one of those functions is insufficient. PO Sur-reply 2.” slip op. at 9

  Patent outcomesUS 6,949,389 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 6,949,389
• Apple Inc. v. Smart Mobile Technologies LLCNo claims unpatentable
  PTAB · Sep 25, 2024 · IPR2022-01223 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–3 and 5 were not shown unpatentable over Yegoshin, Bernard, Johnston, and Preiss under § 103 because the evidence did not establish multiplexing signals.

  RulingsFinal written decision

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

    “communication device for multiplexing signals.” Ex. 1001, 12:2–3 (emphasis added). The language in the preamble does not support adopting Petitioner’s proposed interpretation of “multiplexing” to mean that “the connections may be used simultaneously or sequentially for combining multiple data paths into a single path,” because signals are being multiplexed, not connections or data paths. Pet. Reply 10. No connection is recited in the preamble with regard to multiplexing.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Resp. 9–10 (citing Ex. 1002 (file history of the ’075 patent), 12; Ex. 2003 (Defendants’ Opening Claim Construction Brief from related litigation), 40–41; Ex. 2023 (Claim Construction Order from related litigation), 7). “Petitioner does not dispute that the preamble of claim 1 is limiting.” Pet. Reply 9 (citing PO Resp. 9–10; Ex. 2003, 45–46). Based on the full record, we adopt the parties’ agreement that the preamble is limiting. See also Ex. 2003, 45–46; Ex. 2023, 7.” slip op. at 9

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

    “show by a preponderance of the evidence that Yegoshin teaches or would have been understood to reasonably suggest “multiplexing signals” and that Bernard “includes or operates as a multiplexer for combining the data packets.” See Pet. 32–40. Because Petitioner does not show multiplexing signals in any of the asserted references, Petitioner does not show by a preponderance of the evidence that its proposed combination of Yegoshin, Bernard, Johnston, and Preiss would have rendered obvious “[a]n IP-enabled communication device for multiplexing signals,” as recited by claim 1. Also, because Petitioner fails to show Yegoshin teaches or would have been understood to reasonably suggest multiplexed signals and fails to show that Bernard “includes or operates as a multiplexer for combining the data packets,” Petitioner’s asserted motivation to modify Yegoshin in view of Bernard for “multiplexing signals” lacks rational underpinning. Weighing the underlying factual determinations, a preponderance of the evidence does not persuade us that claim 1 of the ’075 patent is unpatentable over Yegoshin, Bernard, Johnston, and Preiss. Arctic Cat, 876 F.3d at 1361.” slip op. at 44

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We do not credit Petitioner’s cited testimonial evidence because, for the reasons above, Yegoshin and the full record do not support it. Ex. 1003 ¶¶ 79, 80. We, instead, credit Patent Owner’s cited testimonial evidence because Yegoshin and the full record better support it. Ex. 2018 ¶¶ 50, 51, 55–56, 58–61; see also Ex. 2025, 65:19–66:4.” slip op. at 26

  Patent outcomesUS 9,319,075 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,319,075
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationNo claims unpatentable
  PTAB · Sep 17, 2024 · IPR2024-00037 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–9, 12–24, and 27–31 were not shown unpatentable because Petitioner did not prove either asserted obviousness combination taught the claimed controller or packet-applicable criterion.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience, and a POSA would have had a working knowledge of hardware and software for packet-switched networking. EX1004, ¶¶48-49. Lack of work experience can be remedied by additional education and vice versa. Id., ¶48. Pet. 5. “Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 16. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’111 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “Both parties agree that the ultimate analysis “remains the same” under either construction. Id. at 2; PO Sur-reply 2. We likewise agree that we do not need to decide between the two constructions. At the same time, consistent with parties’ positions, we construe “controller” to mean an entity that is either 1) configured to 2 Though Patent Owner does not provide a citation in support, Petitioner does not disagree that this is consistent with what occurred in the parallel district court proceeding. See Reply 1. perform deep packet inspection on packets, or 2) that is capable of controlling deep packet inspection. We determine that no other terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “Though Petitioner asserts that there are a “limited number of design options” and that it would have been obvious to combine the different components of Lin, Petitioner does not establish that a controller configured to perform DPI analysis on packets was a known solution, and thus one of the limited design options. As discussed in KSR: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that is was obvious under § 103. KSR, 550 U.S. at 421. Besides asserting the combination would have been “obvious to try,” Petitioner provides no other analysis or reason why one of skill in the art would have modified the teachings of Lin to obtain the claimed controller. Thus, Petitioner has not established by a preponderance of the evidence that the teachings of Lin render obvious all of the features of claim 1.” slip op. at 18

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Further, we find the testimony of Patent Owner’s declarant more persuasive based at least on his consideration of Swenson as a whole and his more detailed analysis and explanations. For example, Patent Owner’s declarant explains in detail why, “[i]n the context of a HTTP GET request and response, as disclosed in Swenson, the message does not constitute a single packet but a flow of packets:” Furthermore, Swenson discloses that the steering device 130 “sends an ICAP request message 516 comprising [a] HTTP GET request header and a portion of the [HTTP] response payload to the network controller 140, which inspects the message to determine whether to monitor the flow or optimize the video.” Ex. 1007 [0065]. In the context of a HTTP GET request and response, as disclosed in Swenson, the message does not constitute a single packet but a flow of packets. The reference to a HTTP request and response “header” and “payload” are thus not references to the header and payload of a packet. A POSA would know that despite common parlance references to “HTTP packets,” HTTP does not pertain to individual packets, whereas packet transmission is governed by the TCP protocol. HTTP utilizes TCP to exchange data such that information may be used by an end user (e.g., a video or audio stream). Even assuming that Swenson’s controller were analyzing the header and payload of an HTTP request/response, a POSA would understand that this analysis is not at the packet but at the flow level and thus does not constitute deep packet inspection. Ex. 2025 ¶ 69. Petitioner’s declarant merely responds by reiterating what was previously stated: Swenson is explicit in stating that its inspection techniques include inspection of “a portion of the [HTTP] response payload.” . . . A POSA would have understood the analysis of the “response payload” to be DPI by a DPI-capable controller, as DPI refers to monitoring the payload of a packet.” slip op. at 15

  Patent outcomesUS 10,652,111 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,652,111
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationNo claims unpatentable
  PTAB · Sep 17, 2024 · IPR2023-00554 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–9, 12–24, and 27–31 were not shown unpatentable because neither asserted obviousness combination established all limitations of claim 1.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (POSA): would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of professional experience, and a POSA would have had a working knowledge of hardware and software for packet-switched networking. EX1004, ¶¶48-49. Lack of work experience can be remedied by additional education and vice versa. Id., ¶48. Pet. 5. “Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 16. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’111 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “We likewise agree that we do not need to decide between the two constructions. At the same time, consistent with parties’ positions, we construe “controller” to mean an entity that is either 1) configured to 2 Though Patent Owner does not provide a citation in support, Petitioner does not disagree that this is consistent with what occurred in the parallel district court proceeding. See Reply 1. perform deep packet inspection on packets, or 2) that is capable of controlling deep packet inspection. We determine that no other terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “We agree with Patent Owner that DPI and DFI would have been understood to be different processes – That DPI inspects the detailed contents of individual packets in a granular, thorough manner; and, in contrast, DFI focuses on the broader patterns of network traffic flows by looking at aggregate data flow characteristics. As discussed above, the testimony of Patent Owner’s declarant as to the understanding of DPI is largely uncontested. Further, the testimony of Patent Owner’s declarant as to the understanding of DFI is supported by Swenson when considered as a whole as well as supported by Exhibit 2027.” slip op. at 13

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

    “a POSA would have understood that one of the limited number of design options would have been to implement the security service as part of a controller configured to perform DPI analysis on packets, and a POSA would have had a reasonable expectation that the controller would have been successful in performing DPI analysis. Id. at 18–19 (citing Ex. 1004 ¶ 79 (making an identical statement)). No additional discussion, explanation, or evidence on these points were provided at the Petition stage. Patent Owner argues that: The mere fact that the security service may share certain common technical characteristics with the controller (i.e., its connection to the network switch and the hardware in which these two separate entities are implemented) cannot in and of itself suggest to a POSA that the function carried out by the security service should also be performed by the controller or that the controller should be configured to perform that function (i.e., deep packet inspection). PO Resp. 21–22 (citing Ex. 2025 ¶¶ 54–55). We agree. Though Petitioner asserts that there are a “limited number of design options” and that it would have been obvious to combine the different components of Lin, Petitioner does not establish that a controller configured to perform DPI analysis on packets was a known solution, and thus one of the limited design options. As discussed in KSR: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that is was obvious under § 103. KSR, 550 U.S. at 421. Besides asserting the combination would have been “obvious to try,” Petitioner provides no other analysis or reason why one of skill in the art would have modified the teachings of Lin to obtain the claimed controller. Thus, Petitioner has not established by a preponderance of the evidence that the teachings of Lin render obvious all of the features of claim 1.” slip op. at 17

  Patent outcomesUS 10,652,111 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,652,111
• Duration Media LLC v. Rich Media Club LLCNo claims unpatentable
  PTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19

  • Strike new argumentNew argument disregardedGranted

    “Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “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.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25

  Patent outcomesUS 11,443,329 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 11,443,329
• Cisco Systems, Inc. v. Corrigent CorporationNo claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00447 · APJ Nathan A Engels · IPR · Final written decision

  Claims 1–26 were not shown unpatentable because the Petition did not establish the claimed port assignment and packet labeling under Raz or adequately explain the Raz–Ferguson combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “packet-switched networking, MPLS and LAG.” Pet. 6 (citing Ex. 1004 ¶¶ 57–58). Petitioner also states that a lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1004 ¶ 57). Patent Owner “uses the same definition.” PO Resp. 4. We apply Petitioner’s level of ordinary skill, which is undisputed and is consistent with the level reflected by the ’602 patent and the asserted prior art.” slip op. at 6

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

    “We construe claims using the principles set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc) and related cases. See 37 C.F.R. § 42.100(b) (2022). Under that precedent, the words of a claim are generally 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, 415 F.3d at 1312–13. Neither party proposes any express claim constructions. Pet. 6–7; see PO Resp. 4. To the extent that the parties dispute the meaning of certain claim terms, we address those issues below, but we determine it is unnecessary to expressly construe any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • BurdenNot shown unpatentable

    “Patent Owner argues, and we agree, that the cited portions of Raz do not disclose a LAG between two switches. PO Resp. 8–9. Petitioner acknowledges this; as stated in Petitioner’s Reply, “Petitioner has always acknowledged that Raz addresses the use of subports within an LSR, but a [person of ordinary skill in the art] would have found it obvious from Raz to use Ethernet physical data ports of a router or switch in an Ethernet LAG to communicate high-speed packet streams in [an] MPLS network.” Pet. Reply 2 (citing Pet. 15, 19, 22–25; Ex. 1021 ¶ 13; Ex. 1006, 1:16–19, 2:23– 31, 7:7–29, 11:3–12, 13:16–19, 14:42–44, 15:56–58, 17:7–9). Petitioner argues that LAGs were well known and, “[w]hile PO argues that Raz teaches the use of a single high-speed link to communicate between LSRs, that is merely a design choice.” Pet. Reply 3 (citing Ex. 1021 ¶¶ 15–17; PO Resp. 8–9). Further, Petitioner argues “[i]t would have been obvious to a [person of ordinary skill in the art] that high-speed packet streams could be communicated between switches or routers through a physical tunnel port of a LAG.” Pet. Resp. 3 (citing Ex. 1021 ¶¶ 15–17) (emphasis added). Among other problems, though, those arguments were not in the Petition; the Petition does not describe modifications of Raz’s teachings, much less establish those modifications as a “design choice.” See Pet. 25; see also PO Sur-reply 3. Further, we agree with Patent Owner that Raz is fundamentally different with its teachings of multiplexing the outputs of multiple slow- speed subports/processors into a single stream for transmission across a single high-speed link. PO Resp. 7–9, 12–13, 15–16; PO Sur-reply 4–5. As stated in Raz, “[t]he present invention provides a subport forwarding and provisioning mechanism whereby a plurality of subports comprising slower speed processors are used to perform the packet processing for a higher speed packet stream.” Ex. 1006, 6:24–27. Additionally, where Raz describes communication between two LSRs, Petitioner acknowledges that Raz teaches that its cited second LSR assigns the port on which it will receive a data packet. Pet. Reply 4; Ex. 1021 ¶ 20 (“in Raz, the second LSR chooses the subport that will be used to transmit the data packet from the first LSR and receive the data packet at the second LSR”). According to Petitioner, Raz teaches that “a first LSR generates a data packet label in which a port serial number is encoded and sends the label to a preceding LSR. Subsequently, the preceding LSR sends a data packet to the proper subport for processing. The process is then repeated in sending the data packet from the first LSR to a second LSR.” Pet. Reply 4 (citations omitted). “This technique just as easily could have been implemented to identify a single physical tunnel port through which a data packet in a first router or switch would be communicated to a second router or switch via a LAG.” Pet. Reply 4 (emphasis added) (citing Ex. 1006, 2:23–25, 7:7–16, 7:22–26, 11:3–29, Fig. 5; Ex. 1021 ¶ 18). Again, these arguments were not made in the Petition (see Pet. 22–25), and Petitioner’s assertions that Raz’s teachings “just as easily could have been implemented” in the manner claimed is improper hindsight and inconsistent with the fundamental differences between Raz’s multiplexing within an LSR and the claimed link aggregation and port assignment between MPLS/LAG switches.” slip op. at 8

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

    “[c]laims 1–13, 15–24 and 26 set forth above in Ground 1.” Pet. 52. Further, Petitioner states that “[f]or independent [c]laims 1, 15, and 26, Ferguson builds on the previous analysis of Raz by disclosing a system for communicating packets between switches and routers in an MPLS network.” Pet. 52; see Pet. 52–55. Critically, though, Petitioner does not specifically explain how the combined teachings of Raz and Ferguson would satisfy individual claim elements. Among other problems with Petitioner’s proposed combination, Petitioner does not adequately explain how or why a person of ordinary skill would have combined the references to include the claimed port assignment and packet labeling for transmission of a packet from a preceding node and then between a first and second MPLS switch. See Pet. 56–59. Instead, Petitioner generally advocates for the combination of Raz and Ferguson, arguing for example that “both Raz and Ferguson are directed to solving the problem of ensuring enough bandwidth is available to communicate high-speed packet streams through an MPLS network.” Pet. 57 (citing Ex. 1006, 10:60–11:12, 14:33–41, 15:47–55, 17:1–9, Fig. 5; Ex. 1007, 1:28–42, 2:54–57, 4:55–60; Ex. 1004 ¶¶ 247–249). Further, Petitioner contends a person of ordinary skill “would have understood from the disclosures in Ferguson that techniques for utilizing an Ethernet physical data port in a LAG to communication data packets between routers or switches in an MPLS network are also applicable to the use of subports transmitting the data packets within the routers or switches, and vice versa.” Pet. 59 (citing Ex. 1004 ¶ 250; Ex. 1007, 5:61–6:6); see Pet. 56–59; Pet. Reply 20. But Petitioner does not adequately explain how the proposed combination of Raz and Ferguson would cure the deficiencies addressed above in Petitioner’s analysis of Raz for Ground 1. Among other problems, none of Petitioner’s arguments adequately address port assignment and labeling in the proposed combination, much less adequately explain why the proposed combination would satisfy the challenged claims. See Pet. 55–56. As Petitioner does not adequately explain how the teachings of Raz and Ferguson might be combined to cure the deficiencies addressed above, we additionally determine Petitioner’s arguments and evidence advanced for the combination of Raz and Ferguson do not establish obviousness by a preponderance of the evidence for any of claims 1–26.” slip op. at 11

  Patent outcomesUS 9,118,602 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,118,602
• Samsung Electronics Co., Ltd. v. G+ Communications, LLCNo claims unpatentable
  PTAB · May 31, 2024 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 1–15 and 17–18 were not shown unpatentable because the prior art did not disclose a “pre-set UE number” under the adopted construction.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “We are not persuaded to maintain our preliminary construction. Indeed, as already noted, Petitioner does not argue for the preliminary construction. Neither does Petitioner question the validity of the reasons given for the District Court’s construction. Rather, Petitioner repeats its position that it “takes no position on the District Court’s construction” and Petitioner does not have any reason “as to why that construction is wrong or right.” Tr. 18:24–19:6. We do not see any reason to construe “pre-set UE number” contrary to what the District Court has determined. Indeed, we find the District Court’s analysis of the issue highly persuasive and adopt it as our own. And Petitioner has not provided any argument regarding construction of the term, simply taking no position on its correctness.” slip op. at 12

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

    “Petitioner has forfeited the indefiniteness argument. Regardless, we are given no reason to find construction of the two means-plus function terms impossible given the District Court determination. We agree that the scope of the terms is based on a means-plus function analysis. We are not persuaded that structure is not sufficiently described.” slip op. at 14

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Patent Owner argues that this argument was not presented in the Petition and is too late and/or incorrect. Sur-reply 5. We agree with Patent Owner. Neither Patent Owner nor the Board were given any notice of this argument in the Petition. Regardless, we find no merit in Petitioner’s argument. Fundamentally, our jurisdiction regarding patentability is limited to Sections 102 and 103 of the Patent Act. 35 U.S.C. § 311(b). We do not find that claim 18 is so indefinite that a patentability determination is impossible. See Intel Corp. v. Qualcomm Inc., 21 F.4th 802, 812–813 (Fed. Circ. 2021) (claim construction obligation “does not mean that the Board must reach a determination of the patentability of a claim on the presented prior-art grounds if such a determination is rendered impossible because of the indefiniteness of an essential claim limitation.”). Indeed, the District Court determined that the corresponding structure is a processor programmed to either (1) descramble a Cyclic Redundancy Check (CRC) of Downlink Control Information (DCI) for scheduling the RAR according to a pre-set RA-RNTI or an RA-RNTI corresponding to the preamble, and receive the RAR, the RAR including at least one TCRNTI and/or at least one Uplink (UL) grant. Ex. 2008, 23 (quoting Ex. 1001, 2:66–3:4). (2) determine corresponding RA-RNTIs according to respective IDs and/or preambles, descramble a CRC of DCI for scheduling the RAR according to the corresponding RA-RNTIs, and receive corresponding RARs, the RAR including a TCRNTI and/or a UL grant allocated to the first UE or second UE.” slip op. at 13

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

    “Our construction of “pre-set UE number” is dispositive of this proceeding. See Section III.B.1 above. Petitioner agrees that both Li and Kim “don’t disclose that the message 3 includes a ‘pre-set number of UEs’” under our final construction of “pre-set UE number.” Pet. Reply 4; see also Tr. 7:20–22 (“Under [the District Court] construction, Li and Kim would not disclose Claim 1, at least Claim 1, of the ’430 patent”); 11:3–17 (Petitioner’s counsel arguing claim 18 is indefinite but agreeing neither claim 1 nor 18 have been shown unpatentable under the District Court construction of “preset UE number”). For the reasons set forth above, Petitioner has not shown a by a preponderance of the evidence that claims 1 and 18 are anticipated by Li.” slip op. at 18

  Patent outcomesUS 10,448,430 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,448,430
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00398 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–22 were not shown unpatentable as obvious over Dill, Vadhri, and Akashika because Dill was not shown to disclose the claimed Integration Tier Limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s undisputed formulation of ordinary skill in the art as set forth above, because we are satisfied this formulation generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. We do not adopt Patent Owner’s annotation to Petitioner’s formulation as requiring knowledge of “mobile wallets” specifically, because we determine knowledge of “mobile payment systems and techniques” per Petitioner’s formulation is tied sufficiently to the claims of the ’196 patent to reflect the level of ordinary skill in the pertinent art. At the same time, even if we were to include knowledge of “mobile wallets” in our formulation, it would not materially change our Decision as set forth below. That is, we would still determine Petitioner has not shown by a preponderance of the evidence that Dill discloses the Integration Tier Limitation.” slip op. at 10

  • Expert testimonyNot reached

    “We need not resolve the parties’ dispute as to whether Dr. Houh qualifies as an ordinarily skilled artisan. Even assuming that Dr. Houh possesses, at a minimum, ordinary skill in the art—as we have done in this Decision—we determine Petitioner still fails to show that any of the challenged claims are unpatentable.” slip op. at 12

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

    “The Integration Tier Limitation requires no further construction for purposes of this proceeding. See Pet. Reply 7 (“[N]o specific construction is required.”). The claim clearly specifies that the claimed “web services communication mechanisms” must serve as an interface between the integration tier and (1) the claimed mobile wallet application and, separately, (2) “a plurality of different device types over a plurality of different communication channels.” For purposes of this Decision, we assume that this interface may be direct or indirect. See id. at 6 (asserting that “communication channels that interface, even indirectly, with the ‘web services communication mechanisms’ still interface with the ‘web services communication mechanisms’”).” slip op. at 28

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

    “However, we find that of those four channels (1)–(4), only the first channel (1) is associated with web interface 137 such that it qualifies as a “communication channel,” as required by claim 1. There is no indication in the Dill disclosures cited by Petitioner that any of the other three channels (2)–(4) are associated with web interface 137. For example, Figure 9 of Dill includes a double-headed arrow to illustrate communication between web interface 137 and transfer options module 145, but Figure 9 does not include any arrows to illustrate communication between web interface 137 and any one or more of IVR interface 136, other interfaces 138, agent system 135, or mobile network 115. See Ex. 1005, Fig. 9. In other words, Petitioner fails to show Dill teaches web interface 137 interfaces with any devices over any of channels (2)–(4), as would be required by Petitioner’s mapping. In the Petition, Petitioner never clearly (or persuasively) addresses this requirement of the claim. Petitioner does contend that transfer options module 145 is coupled to various devices via interfaces 136–138 and exchanges transaction information (see Pet. 25–26; see also Pet. Reply 10– 11), but that contention misses the mark. The salient question is whether Dill’s web interface 137 (i.e., the claimed “web services communication mechanisms”) interfaces with the different device types over the channels, not whether transfer options module 145 (i.e., the claimed “integration tier”) does so.” slip op. at 30

  Patent outcomesUS 10,438,196 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,438,196
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we determined that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27

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

    “for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13

  • BurdenNot shown unpatentable

    “Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22

  Patent outcomesUS 9,208,488 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,208,488

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.