• Qualcomm Incorporated v. Cobblestone Wireless, LLCSome claims unpatentable
  PTAB · Mar 5, 2026 · IPR2024-01336 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–4, 6–9, 24, and 25 are unpatentable; claims 10, 13, 14, 17, and 21–23 were not shown unpatentable, principally due to missing limitations or insufficient motivation to combine.

  RulingsFinal written decision

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

    “information” should be given its plain and ordinary meaning as “data,” and that Patent Owner’s narrower construction of “first information” and “second information” lacks sufficient support in the intrinsic record. We agree with Petitioner that the ’802 patent Specification defines “information” as data when it uses the phrase “information (i.e., data).” See Ex. 1001, 5:60–62 (“Information (i.e., data) to be transmitted may be received in a baseband digital system 250, such as a wireless digital baseband processor.” (emphasis added)), 11:30–32 (“In this example, the signals 911 and 912 carry the same information (data).” (emphasis added)). As the Federal Circuit has explained, a “specification’s use of ‘i.e.’ signals an intent to define the word to which it refers.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009). slip op. at 13

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We find credible and agree with Dr. Cooklev’s testimony that the predistortion signals from tables 17-1 and 17-2 “are cancelled out by Suzuki’s amplifier” 28. Ex. 2013 ¶ 50. Dr. Cooklev supports his opinion by referring to paragraph 1 of Suzuki, which states that Suzuki’s invention is directed to “a multi-band lookup table type predistorter” (such as the one implemented using lookup tables 17-1 and 17-2 in Figure 6) that “compensates for a distortion of a power amplifier.” Ex. 2013 ¶ 54; Ex. 1004 ¶ 1. Dr. Cooklev’s opinion is also supported by paragraph 3 of Suzuki, which explains that a conventional digital predistorter uses a lookup table “for linearizing non-linear characteristics of an amplifier.” Ex. 1004 ¶ 3; Ex. 2013 ¶ 54. Dr. Cooklev further supports his opinion by relying on Suzuki’s disclosure in paragraph 46 that power amplifier 28 is “subject to distortion compensation” by the predistorter, and that distortion components in the signal output by the amplifier are canceled by “distortion compensation data [that] are read out from the lookup tables 17-1 and 17-2 and provided to the adders 13-1 and 13-2, respectively.” Ex. 1004 ¶ 46; Ex. 2013 ¶ 54. And, Dr. Cooklev’s opinion is supported by Suzuki’s disclosure in paragraph 47 that the distortion compensation added by adders 13-1 and 13-2 add the distortion compensation data from lookup tables 17-1 and 17-2 “to perform distortion compensation (addition of predistortion)” to “signals to be transmitted.” Ex. 1004 ¶ 47; Ex. 2013 ¶ 54. Petitioner agrees that the distortion compensation data from lookup tables 17-1 and 17-2 “are added to the respective frequency band from” input signal ST “in order to predistort the output signal, which is then transmitted,” and does not dispute that the distortion compensation data from lookup tables 17-1 and 17-2 is ultimately cancelled out by the distortion created by amplifier 28. Pet. Reply 8. In light of the above evidence, we agree with Patent Owner that Suzuki’s distortion components from lookup tables 17-1 and 17-2 in Figure 6 (which Petitioner relies on for the first and second digital signals in limitations 10a and 10b) are cancelled out by the distortion created by power amplifier 28 before the signal is ultimately transmitted. We agree with Petitioner that these first and second digital signals include data in the form of distortion compensation data. However, because these signals are cancelled by the distortion from amplifier 28 before transmission, the data from these signals is never transmitted. Thus, the first and second digital signals identified by Petitioner (the distortion compensation data from lookup tables 17-1 and 17-2) do not comprise data “to be transmitted,” as limitations 10a and 10b require.” slip op. at 35

  Patent outcomesUS 7,924,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,924,802
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 30, 2026 · IPR2021-01449 · APJ Jon M Jurgovan · IPR · Remand

  Claims 3–5 are unpatentable; claims 1 and 2 are not shown unpatentable. Claims 3 and 4 are obvious over the applied grounds under the remand construction of “movement vector.”

  RulingsRemand decision

  • RemandOther

    “was incorrect, vacated the Final Written Decision as to claims 3 and 4, and remanded the case to the Board to determine the ordinary and customary meaning of “movement vector” and decide the outcome for claims 3 and 4 in accordance with that meaning. Atos, LLC v. Allstate Insurance Company, 2025 WL 1482404, at *5 (Fed. Cir. May 23, 2025); Paper 35 (“Federal Circuit Remand,” “Remand,” or “Fed. Cir. Remand”). Pursuant to the Federal Circuit’s instructions, the Board authorized the” slip op. at 3

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

    “considered individually and together, have well-understood, common meanings to ordinarily skilled artisans as of the invention date, reflected by the ’174 patent’s specification and other evidence of record noted above. Accordingly, we determine that the ordinary and customary meaning of “movement vector” is “a vector indicating movement of an object.” 3) “operation indicator” Petitioner” slip op. at 20

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

    “Dr. Kanellakopoulos’s explanation that angular momentum is not inherent to an object, and its computation requires an arbitrary choice of a point of origin that has no physical meaning in the context of vehicle motion, also supports Patent Owner’s position. Id. ¶ 71 (citing Ex. 2004, 262). Accordingly, Patent Owner’s argument, that angular momentum cannot be used to detect a vehicle turning, is persuasive. Id. We also find persuasive, as Dr. Kanellakopoulos explains, that Petitioner’s argument regarding the figure on Kleppner 234 is based on misinterpretation of the vectors in that figure. Id. ¶ 67 (explaining that Kleppner 233–234 does not depict a gravity vector).” slip op. at 35

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

    “Kleppner does not disclose a rotation vector, a person of ordinary skill would have used the knowledge of a rotation vector (because it is a term of art) alongside Kleppner’s teaching, to arrive at claim 1. See Pet. Reply 11. This argument does not satisfy Petitioner’s burden to provide articulated reasoning with some rational underpinning to support the conclusion of obviousness. See KSR, 550 U.S. at 419 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner does not explain which teaching of Kleppner a person of ordinary skill would have selected and combined with their knowledge of a rotation vector to yield the method of claim 1, or explain why a person of ordinary skill would have recognized based on Kleppner that estimating the angle between a rotation vector and gravity vector could be used to detect a vehicle turning. Nor does Petitioner respond to Patent Owner’s assertion that Kleppner provides no rationale for estimating an angle of alignment between a rotation vector and gravity vector as a way of detecting a vehicle turning. See Ex. 2001 ¶ 65.” slip op. at 35

  Patent outcomesUS 9,846,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,846,174
• Apple Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Oct 9, 2025 · IPR2024-00806 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 15–17, and 20 are unpatentable under § 103; claims 14 and 19 were not shown unpatentable because the proposed paramagnetic flux paths in Wakuda lacked adequate support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 33. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 11

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

    “The parties agree that independent claims 1, 19, and 20 include means plus function limitations under 35 U.S.C. § 112 ¶ 6.8 Pet. 3–7; PO Resp. 6–14. An element in a claim for a combination may be expressed as a means . . . 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. In particular, the parties agree that the “driving component” and “control component” requirements of independent claims 1, 19, and 20 are means plus function limitations. Pet. 3–7; PO Resp. 6–14. Construing a means plus function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Therefore, the specification clearly links the function of “control[ing] supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” at least to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.11 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs to the switch; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law 11 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:17–20. that limits the structure to that necessary to perform the claimed function. 12 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 18

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

    “to include the ability disclosed in Ramsay to allow a user to customize and store parameters associated with haptic effects, such as creating “haptic track files” that specify variations in the amplitude and frequency of the effect over time to achieve a desired effect. Pet. 46–47 (citing Ex. 1006 ¶¶ 15, 25– 28, 37; Ex. 1003 ¶¶ 192–193). Petitioner argues that this combination would have been motivated by the desire to expand the functionalities of haptic devices to allow end users to create and customize haptic effects, to provide a fuller haptic experience, and to be able to store haptic effects to save processing power compared to real-time generated effects. Id. at 47–49 (citing Ex. 1006 ¶¶ 14–15, 30, 47, 53–57; Ex. 1003 ¶¶ 194–196). Petitioner argues that this making combination would have had a reasonable expectation of success given that both references deal with linear actuators, both disclose storing frequency and amplitude values, and the combination involves routine knowledge of software techniques. Id. at 49–50 (citing Ex. 1004, 2:3–9; Ex. 1006 ¶¶ 17, 26–28; Ex. 1003 ¶¶ 197–198). Petitioner further argues that it would have been obvious to use the H-bridge switch of Rossi as part of the Gregorio actuator drive circuit 16 in the asserted Gregorio-Ramsay combination to periodically switch the polarity of drive signals to electric coil 28 of Gregorio, and thus oscillate magnet 27, under the control of a signal from processor 12 of Gregorio. Pet. 56 (citing Ex. 1003 ¶ 211). Petitioner argues that this combination would have been motivated because Gregorio does not disclose implementation details and therefore one of ordinary skill would have looked toward teachings like Rossi to fill in those details, and that an H-bridge switch was a well-known example circuit for implementing a change in “current flow direction/polarity” for “push” and “pull” actions in a system, and was a simple, cost-effective, and reliable circuit design. Id. at 56–58 (citing Ex. 1020, Abstr., Figs. 4, 6, 1:65–3:54; Ex. 1003 ¶¶ 212–217). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques through routine circuit design considerations and software instructions for generating the control signal. Id. at 58 (citing Ex. 1003 ¶ 218). Petitioner further argues that it would have been obvious to modify the Gregorio-Ramsay-Rossi combination, using the control algorithm disclosed in Aldrich, to replace the monitoring technique of Gregorio with that of Aldrich to maintain a resonance frequency by incrementing or decrementing the drive frequency. Pet. 58–59 (citing Ex. 1004, 4:22–28, 4:42–48; Ex. 1021, 2; Ex. 1003 ¶ 219). Petitioner’s expert provides implementation details of Aldrich, including that the Aldrich hill-climb technique would use a Boolean value to indicate whether the frequency was being increased, with local variables set to default values, and use integer values when processing sensor signals. Id. at 59–60 (citing Ex. 1021, 2; Ex. 1003 ¶¶ 220–222). Petitioner argues that these modifications would have been motivated to improve the Gregorio system using the Aldrich feedback algorithm for targeting a resonant frequency, given that the Gregorio approach had shortcomings that required a monitoring period with reduced haptic feedback, receiving weak EMF signals. Id. at 61–62 (citing Ex. 2004, 3:65–5:55, 5:63–65; Ex. 1021, 1–3; Ex. 1003 ¶¶ 223–227). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques for improvement to yield predictable results, readily implemented via software executed by the microprocessor. Id. at 62–63 (citing Ex. 2004, 2:44–50; Ex. 1021, 2; Ex. 1003 ¶ 229). Patent Owner does not address Petitioner’s arguments regarding the” slip op. at 27

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,941,830
• Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are 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). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7

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

    “Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19

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

    “For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29

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

    “to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44

  Patent outcomesUS 10,806,124 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,806,124
• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2

  • Expert testimonyOther

    “being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25

  Patent outcomesUS 7,436,980 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,436,980
• Google LLC v. Wildseed Mobile, LLCSome claims unpatentable
  PTAB · Jun 3, 2024 · IPR2023-00247 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–14 and 16–22 are unpatentable as obvious over the asserted combinations; claim 15 was not shown unpatentable because the SMS theory did not establish rendering instructions.

  RulingsFinal written decision

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

    “should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 12. Prior to institution, Patent Owner agreed (Prelim. Resp. 9), and we applied, each term its ordinary and customary meaning in our Institution Decision. Dec. on Inst. 8 (“At this stage, no need exists to construe any claims expressly to resolve the parties’ disputes”). In its post-institution briefing, Patent Owner does not argue for construction of any particular claim term. Although Patent Owner argues that Rothschild does not teach “generate a hot link message,” we determine that the controversy is over the teachings of Rothschild and the assertions presented by Petitioner rather than the construction of that term. See, e.g., Pet. Reply 15 (“by inserting the advertisement into the email and formatting it for transmission, Rothschild’s email server generates the advertisement”); Tr. 8:5–11 (“the advertisement [is] inserted into the email, and then it is formatted into something that the user can interact with. In other words, it becomes a hot link at that point.”); PO Sur-reply 1 (“the Petition expressly relied on creating ads (allegedly ‘hot links’) during message formatting”), 3– 4 (stating that in the ’169 Patent, “[l]inks will be created” using “pre- cited sections, both parties acknowledge that “generat[ing]” a hot link requires pre-created content and some further action, differing only on whether Rothschild teaches any such further action. Consequently, we need not construe that phrase to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 11–12 (citing Ex. 1003 ¶¶ 18–20). Patent Owner applies Petitioner’s assessment of the level of ordinary skill for the purposes of this proceeding. PO Resp. 9. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is consistent with the ’169 patent and the asserted prior art.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 10,869,169 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,869,169
• Unified Patents, LLC v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 18, 2023 · IPR2022-01086 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable over Sonohara; claims 20 and 21 were not shown unpatentable because Sonohara’s assignment rule is based on timestamps.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s expert, Dr. Goodrich, proposes what Patent Owner characterizes as “a somewhat different level,” namely “an individual with at least a bachelor’s degree in Computer Science or related area and two years of experience developing software tools and/or computer systems for use in the area of audio or video creation, encoding, and/or distribution.” PO Resp. 13; Ex. 2007 ¶ 50. Although we agree that the respective articulations are “somewhat different,” they are generally similar, and our Decision does not depend on nuanced distinctions regarding the level of ordinary skill. Indeed, Dr. Goodrich describes his proposed articulation as “approximate,” such that “more work experience could compensate for less education or more education could compensate for less work experience.” Ex. 2007 ¶ 50. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Freedman’s testimony, we adopt it for this Decision. 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). We nevertheless note that we would reach the same ultimate conclusion that claims 1, 3, 5, 9, 12, 13, and 15 (but not claims 20 and 21) have been shown to be unpatentable by a preponderance of the evidence were we to adopt Patent Owner’s proposal. See PO Resp. 13 (“this Response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill”).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “We need not resolve this dispute because we reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that claims 1, 3, 5, 9, 12, 13, and 15 are unpatentable, but not that claims 20 and 21 are unpatentable, even if we apply Patent Owner’s proposed construction that the preambles are limiting and the first and second data files must be different. See Reply 15 (Petitioner asserting that “there is no need to construe the preambles as the prior art meets them even if construed”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). For purposes of this Decision, we accordingly treat the preambles of independent claims 1 and 9 as limiting, and with the recited “first data file” and “second data file” as distinct data files.4” slip op. at 14

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

    “We agree with Patent Owner’s contention that the emphasized sentence defines the term “content-related.” See PO Resp. 15–16 (Patent Owner arguing that “[t]here are thus three strong indications of lexicography: (1) ‘content-related’ is set off by quotation marks; (2) the patentee used the word ‘is’ to describe the term ‘content-related’; and (3) the patentee states what ‘content-related’ is ‘understood to mean.’” Nor does Petitioner disagree that the sentence is definitional. See Tr. 8:15–16 (referring to the “term content-related as it’s defined in the specification”). Indeed, in the Starz litigation, the district court also treated the sentence as definitional, a fact that we find significant as a matter of comity. See Ex. 1018, 111:24–112:1 (district court judge stating at Markman hearing, “I’m going to adopt . . . the express definition provided in the specification”). But like the district court, we discern insufficient reason to adopt the additional gloss that Patent Owner seeks to apply to the definition of “content-related.” That is, Patent Owner proposes that we additionally construe the phrase “syntactical meaning” within the definitional statement to arrive at Patent Owner’s proposed construction. PO Resp. 16–20. According to Patent Owner, “[t]he specification makes clear, through its use of consistent and repeated examples, that ‘syntactical meaning’ requires a specific relationship between the data segments within a data file: succeeding data segments within a data file must be ordered so as to present the content in its intended sequence when rendered.” Id. at 17 (citing VirnetX Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1317–19 (Fed. Cir. 2014); Alloc, Inc. v. ITC, 342 F.3d 1361, 1368–71 (Fed. Cir. 2003)). Patent Owner adds that the claims, the context provided by the problems solved by the ’794 patent, and the cross-examination testimony of Petitioner’s expert, Dr. Freedman, all support this additional aspect of Patent Owner’s proposed construction. Id. at 18–20. Relying on additional direct testimony by Dr. Freedman, Petitioner counters this position as “improperly import[ing] limitations from the specification that are not required by the claims” and “render[ing] other portions of claim 1 superfluous.” Reply 3 (citing Ex. 1016 ¶ 22); see Tr. 10:18–20 (Petitioner explaining at oral hearing that “the syntax information is simply just identification information which is used to find out what the order of the files is. But the identification information does not by itself indicate the order. It’s just an identifier.”). We agree with Petitioner that it would be imprudent to adopt Patent Owner’s additional gloss because, “[w]hile claims must be construed in light of the specification, . . . limitations from the specification are not to be read into the claims, . . . for ‘[i]t is the claims that measure the invention.’” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327 (Fed. Cir. 2004) (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (other citations omitted). It is apparent that the Applicant for the ’794 patent understood how to define terminology recited in the claims, but chose to limit its definition of “content-related” in terms of the broader phrase “syntactical meaning” rather than through narrower specific reference to presentation order. In addition, claims 1 and 9 already specify “sequentially outputting the first and second data segments according to their chronological sequence,” which supports Petitioner’s observation that requiring an additional sequential order to “content-related . . . data segments” renders other portions of claim 1 superfluous. See Reply 3. We accordingly adopt the definitional construction provided by the” slip op. at 16

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed Cir. 2003) (citing Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1347 (Fed. Cir. 1998)) (emphasis added). As such, a statement during prosecution qualifies as a disavowal of claim scope only if it is “so clear as to show reasonable clarity and deliberateness” and “so unmistakable as to be unambiguous evidence of disclaimer.” Id. at 1325 (citations omitted). “Consequently, for prosecution disclaimer to attach, [Federal Circuit] precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable.” Id. at 1325–26. “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016). And “[s]tatements by the patent owner are not considered in a vacuum; rather, the skilled artisan would look at the record as a whole in assessing claim scope.” Galderma Lab’s v. Amneal Pharma, 806 F. App’x 1007, 1010 (Fed. Cir. 2022) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 867 (Fed. Cir. 1993) (“The prosecution history must be examined as a whole in determining whether estoppel applies.”)). We have reviewed the prosecution history, which we summarize supra § I.A.3., and we have particularly reviewed those portions highlighted by Patent Owner. See PO Resp. 32–40. We reach the same conclusion as the district court in the Starz litigation that the standard for attachment of prosecution disclaimer is not met. See Ex. 1018, 109:15–22 (district court stating at Markman hearing, “I’ve also carefully reviewed the portions of the prosecution history relied on by VideoLabs, including the patentee’s arguments regarding the Shin and Rosenau references, and I’m up [sic: not6] persuaded there was a clear and unmistakable disclaimer of all assignment rules that perform assignments by using exact timing information”). slip op. at 20

  Patent outcomesUS 8,605,794 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,605,794
• Apple Inc. v. Scramoge Technology Ltd.Some claims unpatentable
  PTAB · Aug 1, 2023 · IPR2022-00350 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–12 and 14–20 are unpatentable as obvious; claim 13 is not shown unpatentable. Proposed substitute claims 21–23 are unpatentable, so the revised motion to amend is denied.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner’s proposed combination of Hong and Park teaches the recited short-range communication antenna of limitation 1.3. We also are persuaded that Petitioner’s proffered reasoning for modifying Hong’s device to include Park’s NFC antenna coil is sufficient to support the legal conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 20

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

    “claims 1, 12, and 11, respectively. RMTA 1. A listing of proposed substitute claims 21–23 is provided by Patent Owner in the Appendix of its Revised Motion to Amend. Id. at 25–29. For the reasons explained below, we determine that Patent Owner has shown that proposed substitute claims 21–23 meet the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. We also determine that Petitioner has shown by a preponderance of the evidence that proposed substitute claims 21–23 are unpatentable over prior art. Accordingly, we deny Patent Owner’s Revised Motion to Amend.” slip op. at 62

  • ExcludeOther

    “We do not rely on either of Exhibits 2017 and 2018. Accordingly, Petitioner’s Motion to Strike is dismissed as moot.” slip op. at 118

  Patent outcomesUS 9,806,565 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 9,806,565
• Dexcom, Inc. v. Abbott Diabetes Care Inc.Some claims unpatentable
  PTAB · Jul 10, 2023 · IPR2022-00605 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–6, 8–10, and 12–17 are unpatentable over Gravesen and Brister; claims 7, 11, and 18–28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The person of ordinary skill in the art as of the earliest possible effective filing date (“POSITA”) would have had a Bachelor’s degree in Bioengineering, Mechanical Engineering, Electrical Engineering, or a related subject, and one or more years of experience researching, developing and/or designing insertable medical devices, including, e.g., systems for implanting wearable medical devices such as cannulas, infusion sets, and analyte sensors, or equivalent experience. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 14–15 (citing Ex. 1003 (Fletcher Decl.) ¶ 22). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 11 n.1. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11

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

    “On the full trial record, we again find that Patent Owner’s proposed narrowing is unwarranted. First, the intrinsic record does not support Patent Owner’s required “central” axis. Patent Owner argues that the Specification describes two inserter embodiments as having “rotors,” and those rotors have a central axis. PO Resp. 17–18 (citing Ex. 1001, 29:25–28, 29:55–59, Figs. 32, 45). Patent Owner, however, fails to explain why those embodiments should be understood to limit the claims. For example, in Phillips, the Federal Circuit “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at 1323; see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Although the Petition does state that a person of ordinary skill in the art “would understand the plain and ordinary meaning of a ‘recess’ to include ‘an indentation in a line or surface (as an alcove in a room),’” the Petition does not specify what else is “include[d]” in this term, nor does it specify that the plain and ordinary meaning of “recess” includes the entire interior of a housing. The Petition also does not invoke the Specification as demonstrating that the plain and ordinary meaning of “recess” includes the entire housing.13 Pet. 64 (emphasis added). Petitioner’s belated proposal also conflicts with the language of the claims themselves. Independent claim 1 recites “a rotor disposed within the inserter housing.” Ex. 1001, 43:42. Dependent claim 7 narrows claim 1 by reciting that “the housing comprises a recess in which the rotor is received.” Id. at 44:11–12. If the interior of the inserter housing and the recess could be one and the same as Petitioner proposes, there would be no need for claim 7, because it would not further limit claim 1. See 35 U.S.C. § 112(d) (“a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed”); see also Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1370 (Fed. Cir. 2005) (“The concept of claim differentiation ‘normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend.’”) (quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)). Accordingly, we decline Petitioner’s belated request to construe “recess” to include “an entire cavity of a housing or a cylinder.” 13 We acknowledge that Petitioner argued that the entire interior of Gravesen’s housing maps to the claimed “recess,” but this was in the context of comparing the prior art to the claim as construed. Indeed, Petitioner asserted that “the space within [Gravesen’s] housing is an alcove.” Pet. 64– 65 (emphasis added). In sum, Petitioner did not timely argue that the plain and ordinary meaning of the term “recess” includes an entire cavity of a housing or a cylinder. We adopt the only construction Petitioner offered and supported in the Petition. In view of the above, we construe “recess” as meaning “an indentation in a line or surface (as an alcove in a room).”” slip op. at 16

  Patent outcomesUS 10,945,649 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,945,649
• Pelican Biothermal, LLC v. Va-Q-Tec AGSome claims unpatentable
  PTAB · Jun 16, 2023 · PGR2021-00085 · APJ Barry L Grossman · PGR · Final written decision

  The Board granted the motion to amend but held amended claim 64 unpatentable as anticipated by NanoCool 98596-type products and obvious over the cited combinations; all other amended claims were not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has demonstrated by a preponderance of the evidence that amended claim 64 is unpatentable; FURTHER ORDERED that Patent Owner’s Non-Contingent Motion to Amend is granted for claims 64 and denied for all other amended claims; and” slip op. at 77

  • ExcludeMotion to exclude, deniedDenied

    “A. Status as Prior Art Is a Substantive Issue, Not an Evidentiary Issue. A motion to exclude is not an appropriate mechanism for challenging the sufficiency of evidence, such as whether a reference qualifies as prior art, or the proper weight that should be afforded an argument. See Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113, 4, 8–9 (PTAB September 3, 2015); PTAB Consol. Trial Practice Guide 79 (Nov. 30 Mr. Zumwalt testifies that other NanoCool products, designated by product number 85430 and 98630, also have the same configuration as the 98830 product and are made by the same process. Thus, “the 98830, 85430, and 98630 products can be collectively referred to as ‘98830-type’ products all having the same relevant design.” Ex. 1030 ¶ 17. 2019) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”); Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02187, Paper 42,17 (PTAB May 21, 2019) (status as prior art “is a substantive issue, not an evidentiary issue.”) Thus, whether the NanoCool 98830 product is prior art is not the proper basis for Patent Owner’s Motion to Exclude evidence concerning the NanoCool 98830 product.” slip op. at 29

  • Skill levelSkill level board ownOther

    “Neither Petitioner nor Mr. Harber provide any analysis of the factors pertinent to a determination of the level of ordinary skill, identified above, to support their conclusory statements. We give Mr. Harber’s conclusory testimony minimal probative weight. 37 C.F.R. § 42.64(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, there is no persuasive evidence to which we have been directed of the need for specific education or experience in biological or chemical technologies related to the claimed containers and inserts.” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “With regard to the level of ordinary skill in the art, Petitioner asserts that a person of ordinary skill would have had “a bachelor’s degree or higher degree in biological, chemical or mechanical engineering, or related sciences, and at least two to five years of experience in designing and testing ISCs [insulated shipping containers] depending on education level.” Pet. 9 (emphasis added) (citing Ex. 1002 ¶¶ 23–24). Exhibit 1002 is the Declaration testimony of Mr. Paul Haber. Mr. Harber actually states a slightly different level of ordinary skill. Mr. Harber testifies: The hypothetical POSITA would have: (i) at least a bachelor’s degree in biological, chemical or mechanical engineering, or related sciences, and have at least three to five years of experience in designing and testing ISCs [Insulated Shipping Containers][29]. Such a person may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in engineering, or related sciences, and have at least two to three years of experience in designing and testing ISCs. 29 See Ex. 1002 ¶ 23. Ex. 1002 ¶ 24 (emphasis added). Mr. Harber also testifies that “[t]hese descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.” Id.” slip op. at 25

  Patent outcomesUS 10,766,685 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,766,685

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.