- Medivis, Inc. v. Novarad Corp.Some claims unpatentablePTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand
Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.
RulingsRemand decision- RemandOther
“Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22
Patent outcomesUS 11,004,271 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,004,271 - Intel Corporation v. Advanced Cluster Systems, Inc.All claims unpatentablePTAB · Sep 23, 2026 · IPR2025-00915 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–30 are unpatentable: claims 1–3, 5–16, and 18–30 as obvious over Menon, Trefethen, RS6000, and MPIref; claims 4 and 17 over those references plus POEref.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundTeaching away not foundDecided for petitioner
“Ex. 1163 ¶ 37 (citing Ex. 1003 ¶ 71; Ex. 1005, 1–3). We credit Dr. Bajaj’s testimony which is unrebutted and supported by the record. We, thus, agree with Dr. Bajaj’s reasoning which is based on Menon. We further agree with Dr. Bajaj’s conclusion that Menon does not teach away from the combination with Trefethen. Id. ¶ 75. Menon’s description of building on and enhancing the teachings of Trefethen—the earlier work of the same research group at Cornell—by adding MEX routines to achieve high-performance parallel computing and extensibility for MATLAB, demonstrates a classic motivation for a POSITA to combine. RS6000 is specifically referenced in Menon-Trefethen and adds operational details of the parallel operating platform that teach a POSITA how to implement the MultiMATLAB system with a reasonable expectation of success. Considering Menon as a whole, these facts are inconsistent with Patent Owner’s teaching away arguments. For these reasons, Patent Owner’s teaching away argument is unavailing. Motivation to Combine Conclusion We have reviewed Petitioner’s evidence and contentions which we” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, Petitioner establishes by a preponderance” slip op. at 79
Patent outcomesUS 11,563,621 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,563,621 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00003 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–8, 10, 12, 14, and 16–20 are unpatentable under § 103; the Board denied Patent Owner’s revised motion to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art. RMTA 19. Patent Owner’s declarant, Dr. Villasenor, notes that “obviousness must be viewed from the perspective of one of ordinary skill in the field of information security using cryptographic keys for encryption and decryption of digital data, and my opinions are rendered on the basis of the definition of the ordinary artisan set forth in the Petition in view of that further clarification.” Ex. 2010 ¶ 19. 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 ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyOther
“In reply, Patent Owner substantially repeats its arguments against Petitioner’s reliance on Peterka for the claim 1 content encryption key identifiers requirements. Reply RMTA 8–9 (citing Ex. 1005 ¶ 121; Ex. 2010 ¶¶ 89, 93–95); see RMTA 14–15. We are not persuaded by these arguments for the reasons discussed in Section III.D.2.e)(2) above.” slip op. at 65
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues that there was no motivation to combine Peterka with Suzuki because Petitioner has argued that “Peterka can already identify content keys by using the allegedly unique sequence numbers or time stamps assigned to each message carrying a single content key.” PO Resp. 41–42 (citing Pet. 25). Patent Owner also challenges motivation to combine Suzuki because it “is not directed to a pay-by-time, pay-per-view, or subscription distribution model, in which a content key grants access to content that different clients must individually decide to purchase in discrete units or increments.” Id. at 36–37. Petitioner responds that, because Peterka disclosed alternative embodiments that did not use sequence numbers or time stamps to identify EMM/ECM messages, one of ordinary skill would have been motivated specifically assign identifications to individual keys as taught in Suzuki. Reply 22 (citing Pet. 26). Petitioner also argues that whether Suzuki was directed to unpurchased content was irrelevant, because Suzuki is cited to show multiple key responses were conventional. Id. at 19–20. Patent Owner does not otherwise specifically address the issue of motivation to combine Peterka, Suzuki, and Bocharov. See generally PO Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Peterka, Suzuki, and Bocharov as proffered by Petitioner with a reasonable expectation of success.” slip op. at 45
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner that the substitute claims are broadening. Because the amended wording only requires the key request to be made “in response to detecting” the boundary, rather than “ahead of” the boundary, the request can occur before or after the boundary. This is not a fanciful or unlikely possibility — such delayed requests are specifically contemplated by the ’178 patent: [I]f the packager 104 is unable to obtain a new content encryption key from the WFM 102 prior to the expiration of the current content encryption key, the packager 104 will continue to use the current content encryption key until such time as it is able to obtain a new key from the WFM 102. Ex. 1001, 6:32–37. It should be noted that the fixed period duration for key rotation may be viewed as a "target" period, as the packager 104 may not expire a key on the exact boundary. Ex. 1001, 8:9–11. The key expiration time from the WFM 102 may be viewed as a "suggested" expiration time, as the packager 104 may not be able to expire the key at the exact specified time.” slip op. at 56
Patent outcomesUS 9,313,178 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,178 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–7, 9, 11–17, and 19 are unpatentable under §103; the revised motion to amend proposing substitute claims 21–36 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” Lectrosonics, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). Accordingly, a patent owner must provide a claim listing reproducing each proposed substitute claim, and must make an initial showing to demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of the earlier filing date is sought); (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.121.” slip op. at 60
- Expert testimonyOther
“Accordingly, we agree with Petitioner’s contentions regarding the” slip op. at 28
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 14
Patent outcomesUS 11,122,313 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 11,122,313 - Magic Leap, Inc. v. Percept Technologies Inc.All claims unpatentablePTAB · Mar 11, 2026 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Remand
Claims 1–3 and 12–14 are unpatentable as obvious over Osterhout and, separately, over Mann ’526 and Vaissie.
RulingsRemand decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“March 15, 2013 filing date, a person of ordinary skill in the art (“POSITA”) would have had a B.S. degree and a Masters degree in Computer Science, Computer Engineering, Electrical Engineering, Physics, or an equivalent field, as well as one to two years of academic or industry experience in wearable electronic devices or comparable industry experience. Pet. 8–9 (citing Ex. 1003 ¶ 21). Although the level of skill in the art was addressed in the Preliminary Response and the Decision on Institution (see Prelim. Resp. 27–30; Dec. on Inst. 6–10), Patent Owner does not address Petitioner’s definition of the level of ordinary skill in the art. See PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’113 Patent Specification and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For all of the foregoing reasons, we decline to adopt Patent Owner’s proposed ordinary and customary meaning for “a dynamic eye tracking mechanism in communication with the lens” because it is not supported by the claim language or the ’113 Patent Specification, and is supported only by unsworn attorney argument.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“below, we agree with Petitioner. We find that Osterhout teaches the dynamic eye tracking mechanism is in optical communication with the lens, consistent with its ordinary and customary meaning, because in Osterhout the user’s eye receives optical communication in the form of light transmitted from the translucent lens, and the camera of the dynamic tracking mechanism, in turn, receives optical communication in the form of light from the user’s eye. See Ex. 1005 ¶¶ 164, 304.” slip op. at 20
Patent outcomesUS 8,696,113 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,696,113 - BMW Of North America, LLC v. Foras Technologies Ltd.No claims unpatentablePTAB · Mar 5, 2026 · IPR2024-01347 · APJ Russell E Cass · IPR · Final written decision
Claims 1–27 were not shown unpatentable because the asserted combinations did not teach switching the boot-processor role to a spare processor.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“processor” to the spare processor, we determine that the claim is describing this transfer of identification of “boot processor,” which is required when transferring a boot processor’s functions to a spare because of the “problems [that] arise in attempting to idle (or eject) the boot processor.” Id. at 6:25– 27. This is confirmed by the language of limitation [1d], stating that the switching of the role of boot processor involves “changing a system identifier of the spare processor to that of the boot processor.” Thus, the firmware and operating system exchange this information identifying the boot processor, which is described in the specification as a device tree. See, e.g., id. at 13:21–35. The ’302 patent makes clear that accurate identification of which processor is the boot processor remains critical during runtime. See, e.g., id. at 6:25–27. Thus, Patent Owner is correct in requiring the system to have a way to identify the boot processor and to transfer this identification during runtime. However, as made clear in the embodiments described in the ’302 patent discussed above, this identification is for runtime purposes to accommodate runtime problems, not for booting purposes. Although Patent Owner may be correct that a function of the boot processor is to boot the system (PO Sur-reply 5), the problem identified in the ’302 patent is a problem relating to the runtime reassignment of the boot processor identity, to address a runtime need to identify the boot processor. See, e.g., Ex. 1001, 11:6–9. Accordingly, based on our analysis of the claims and specification, we determine that “switching the role of boot processor to a spare processor without shutting down the system’s operating system” means causing the system to identify the spare processor as the boot processor (e.g., in a device tree), which then causes the spare processor to appear as the boot processor to the system during runtime. Ex. 1001, 6:25–41, 11:4–18 (describing why boot processors are treated differently even after the boot process has completed); compare id. at 9:65–11:3 (process for recovering from loss of lockstep of a non-boot processor without using a spare), with id. at 11:4–43 (process for recovering from loss of lockstep of a boot processor using a spare because boot processors, during runtime, need special treatment); see also 14:66–15:21 (emphasizing that spares are only needed for recovering boot processors). We construe switching a “role of boot processor” to mean transferring an identification in the system of which processor is the boot processor. This construction comports with the embodiments described in the specification. We do not adopt an additional requirement that this procedure also requires designating which processor will boot the system in the next reboot, which is not disclosed in the specification.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“may swap processors that are failing, and perform the necessary bookkeeping to keep the operating system informed as to how to address the processors available, nothing in the Petition persuasively explains whether this generic processor swapping switches the boot processor role. As we explained in our claim construction section, the term “boot processor” is not merely a label of convenience to describe the processor that happened to have earlier booted the system. The role of boot processor is specifically switched to the spare; it is a piece of information tracked by the system. As we explain below, Petitioner does not adequately address the transfer of this information to make the system aware of which processor has the boot processor role. Petitioner asserts that “the BSP flag” of the IA-32 system is used to “determine whether a processor is the boot processor.” Pet. 17–18. Petitioner here is relying on a register used in IA-32 processors to identify whether or not they are the boot processor. This register is used during booting so that only the boot processor boots the system. See, e.g., Ex. 1008, 238–40, 710. This register does not appear to serve any further role, and Petitioner offers no persuasive evidence or argument that the processor register flag is exposed or copied to the operating system or APIC table. Petitioner’s proposed combination does not involve updating this register, nor does Petitioner explain how, even if the register were updated, it would meet the “switching” a “role of boot processor” in limitation [1d].” slip op. at 32
- ExcludeOther
“The USPTO has established Rules for objecting to and challenging evidence. 37 C.F.R. § 42.64. This process sets various timeframes and permits briefing and curative actions, all of which are designed to crystallize 5 We follow the parties’ convention of citing to the later-added “Page X of Y” pagination rather than the native pagination. the issues and ensure a full and fair opportunity for the parties to be heard. See id. In this instance, Patent Owner’s evidentiary arguments regarding Exhibits 1008 and 1028 are untimely. Accordingly, we will not exclude Exhibits 1008 or 1028 on the basis of their authenticity, admissibility, or for any reason that should have been raised under the proper procedures. See, e.g., PO Resp. 7–8; PO Sur-reply 7–8; see also Pet. Reply 11 (asserting that “Patent Owner has not filed any objection to or a motion to exclude these references”). We consider Petitioner’s citations to these documents in our prior art analysis below. Notwithstanding, as is clear from our patentability analysis below, Exhibits 1008 and 1028 do not serve to demonstrate the unpatentability of any claim.” slip op. at 26
Patent outcomesUS 7,624,302 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,624,302 - BMW Of North America, LLC v. Foras Technologies Ltd.No claims unpatentablePTAB · Mar 5, 2026 · IPR2024-01346 · APJ Russell E Cass · IPR · Final written decision
Claims 1–30 were not shown unpatentable because the prior-art combinations did not establish transfer of the role of boot processor during system runtime.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner asserts that: A person of ordinary skill in the art in the field of the ’781 patent would have been a person with at least a bachelor’s degree in Electrical Engineering, Computer Engineering, or equivalent, and at least two years of prior work experience with computer architecture, including experience relating to fault tolerant computer architecture, as of the earliest priority date of the ’781 patent—October 25, 2004. If a person did not have a bachelor’s degree, additional relevant and practical experience with fault tolerant computer systems could provide an acceptable substitute. Likewise, further education beyond a bachelor’s degree could compensate for a deficiency in practical experience. See EX2004, Declaration of Nigel A. Jones (“Jones”), ¶ 26. PO Resp. 3. Patent Owner further notes that its position is “similar, but not identical to, Petitioner’s [position]” but that “the analysis [of the claims] is identical for both proposed determinations.” Id. We agree that our analysis would not differ based on choosing one proposed level of skill over the other, but as the losing party, we select Petitioner’s proposed level of skill.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Accordingly, based on our analysis of the claims and specification, we determine that “logic . . . for transferring, during system runtime, the role of boot processor” means logic that causes the system to identify the spare processor as the boot processor (e.g., in a device tree) which then causes the spare processor to appear as the boot processor to the system during runtime. Ex. 1001, 5:39–55, 10:43–67 (describing why boot processors are treated differently even after the boot process has completed); compare id. at 9:37– 10:42 (process for recovering from loss of lockstep of a non-boot processor without using a spare), with id. at 10:43–11:42 (process for recovering from loss of lockstep of a boot processor using a spare because boot processors, during runtime, need special treatment); see also 15:21–42 (emphasizing that spares are only needed for recovering boot processors). We construe transferring a “role of boot processor” to mean transferring an identification in the system of which processor is the boot processor. This construction comports with the embodiments described in the specification. We do not adopt an additional requirement that this procedure also requires designating which processor will boot the system in the next reboot, which is not disclosed in the specification.” slip op. at 26
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Based on the clear support in the specification for the above interpretation, we see no need to resort to extrinsic evidence. Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (“If the meaning of a claim term is clear from the intrinsic evidence, there is no reason to resort to extrinsic evidence.”) (citing Profectus Tech. LLC v. Huawei Techs. Co., 823 F.3d 1375, 1380 (Fed. Cir. 2016) (“Extrinsic evidence may not be used ‘to contradict claim meaning that is unambiguous in light of the intrinsic evidence.’” (quoting Phillips, 415 F.3d at 1324)). In general, the cited portions of testimony from the declarants from both parties in the briefs do little more than point to the portions of the ’781 patent described above or argue about what a boot processor does during booting. See, e.g., Pet. Reply 2–8. The specification makes clear that it is focused on the role of boot processor during runtime because of problems encountered during runtime; it is not focused on the boot processor during booting. Ex. 1001, 5:39–55, 10:43–67. Thus, the testimony about what a boot processor does during booting, or that the primary function of the boot processor is to boot, is not particularly pertinent, and does not undo the unambiguous discussion in the ’781 patent.” slip op. at 27
- BurdenDecided for patent owner
“whether they are the boot processor or not (Ex. 1008, 238, 710), Petitioner does not explain how such information is exposed to the BIOS or operating system, nor how it is changed during runtime, after its purpose has been fulfilled. In sum, even if Petitioner’s proposed combination swaps the spare processor for the processor that booted the system, Petitioner’s proposed combination does not appear to transfer the role of boot processor to the spare processor. At best, Petitioner’s proposed combination transfers the tasks of one processor to another. See Ex. 1005 ¶¶ 15 (Fox describing its disclosure as “updat[ing] the ‘active’ processor list” and “[re-]allocat[ing] the threads that were running on the failing processor”), 46 (transferring “processes (instructions, threads, etc.) initially allocated to the failing processor” to the spare processor)). Of the art of record, we are only aware of the ’781 patent transferring a designation of which processor is the boot processor during the swap to a spare processor. See, e.g., Ex. 1001, 10:43– 55, 11:10–12, 16:19–21, 17:51–55; claims 1, 9, 16, 25. In conclusion, we find that Petitioner has not shown, by a preponderance of the evidence, how the prior art teaches “transferring” a “role of boot processor” as required by limitation 1[c].” slip op. at 40
Patent outcomesUS 7,627,781 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,627,781 - Qualcomm Incorporated v. Cobblestone Wireless, LLCSome claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,924,802 - Cisco Systems, Inc. v. Lionra Technologies LimitedAll claims unpatentablePTAB · Mar 4, 2026 · IPR2024-01281 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–3, 5–10, 12–15, and 17–21 are unpatentable as obvious over Cornett, Paatela, and Nelson; claim 8 is also unpatentable with Russell.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“been motivated to combine the teachings of Cornett, Paatela, Nelson, and Russell in the way Petitioner proposes and would have had a reasonable expectation of success. See supra §§ III.E.2(a)–(b). Hence, Petitioner has shown by a preponderance of the evidence that claim 8 is unpatentable under § 103(a) because the claim would have been obvious over Cornett, Paatela, Nelson, and Russell.” slip op. at 122
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 13
Patent outcomesUS 7,738,471 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision
Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy before us. 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 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34
Patent outcomesUS 9,287,982 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,287,982
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.