- Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentablePTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed
“Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42
Patent outcomesUS 11,318,227 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSRPatents in suitUS 11,318,227 - Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentablePTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
Patent outcomesUS 7,324,802 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,324,802 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2022-00359 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their transmission and cellular-phone limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., And Google LLC v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2022-00091 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki did not teach or suggest their cellular phone or transceiver limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We apply these principles to the Petition’s challenges. 2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner argues that the preambles should be limiting because they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner construction§112(f) appliesDecided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 30, 2022 · IPR2021-00920 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–10, 12, and 14–31 are unpatentable as obvious; claims 11 and 13 were not shown unpatentable because Numazaki does not teach or suggest their limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘PHOSITA’) at the time of the ’431 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1008 ¶¶ 30–32). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’431 patent and prior art of record. We adopt this definition for the purposes of this Decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“they recite essential structure or steps and are “necessary to give life, meaning, and vitality” to the claims. PO Resp. 6 (quoting Acceleration Bay, LLC v. Activision Blizzard, Inc., 908 F.3d 765, 770 (Fed. Cir. 2018)). Specifically, Patent Owner asserts that each claim includes one or more limitations that refer back to the preamble’s “handheld computing device” or “handheld computer apparatus” for antecedent basis. Id. at 6–7. Patent Owner further argues that the ’431 patent discloses different embodiments, with some embodiments being in the form of a computer and some embodiments being in the form of a handheld device. Id. at 7 (citing Ex. 1001, 12:59–13:7, Fig. 10A). Patent Owner contends that the claims are directed to the latter embodiments related to a handheld device and, therefore, “the preamble is necessary to give life, meaning, and vitality to claims 1, 7, and 14, consistent with the embodiments that the inventor chose to claim.” Id. We agree that the preambles of claims 1, 7, and 14 are limiting. This is primarily because the body of each claim includes “said device” or “said apparatus” which refers back to the preamble and is understood with reference thereto. For example, the last clause of claim 7 states: “means for controlling a function of said apparatus using said information.” Ex. 1001, 26:4–5 (emphasis added). “Said apparatus” derives antecedent basis from the “[h]andheld computer apparatus” recited in the preamble. Moreover, the “means for controlling a function of said apparatus” is understood because of this reference to the handheld computer apparatus. The limitations of claims 1 and 14 are similar and so this logic applies equally to these claims as well. Thus, we agree that the preamble recites essential structure and is “necessary to give life, meaning, and vitality” to claims 1, 7, and 14.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“b) Camera Means Petitioner asserts that, though claim 7 recites “camera means,” it is not a means-plus-function limitation under §112 ¶ 6. Pet. 6. Petitioner argues that “a PHOSITA would have considered ‘camera means associated with said housing’ to have a sufficiently definite meaning as the name for structure.” Id. (citing Ex. 1008 ¶ 36). Petitioner further argues that “all optical sensors obtain images by capturing light, so the claimed function is simply describing the general process that all optical sensors employ to obtain images of objects.” Id. (citing Ex. 1008 ¶ 36). “Patent Owner agrees” with Petitioner’s construction PO. Resp. 7. We accept Petitioner’s construction as consistent with the current record.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for petitioner
“c) Computer Means Petitioner contends that claim 7’s limitation of “computer means within said housing for analyzing said image to determine information concerning a position or movement of said object” is a means-plus-function limitation under §112 ¶ 6. Pet. 7. Petitioner argues that the limitation’s function is analyzing an image “to determine positioning or movement of an object.” Id. Petitioner argues that the corresponding structure “includes a computer/processor programmed (1) to identify either natural or artificial features on an object as described . . . or (2) to track the movement using one of the disclosed methods.” Id. at 9; see id. at 8–9 (discussing the disclosure of the ’431 patent) (citing Ex. 1001, 3:38–47, 3:57–62, 4:9–14, 5:2–23, 6:64–7:13, 8:40–59, 11:16–35). Petitioner also argues that “objects” should be construed to mean “both separate objects held/controlled by the user and also part of the user’s body, such as a user’s finger or hand.” Id. at 8; see id. at 7–8 (citing Ex. 1001, 3:39–41, 3:48–50, claims 7–8). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.10 d) Means for Controlling a Function Petitioner argues that claim 7’s limitation of “means for controlling a function of said apparatus using said information” is a means-plus-function 10 In related IPR2021-00917 the petitioner there offered a slightly different construction. See IPR2021-00917, Paper 31, 11–12. The parties do not address the slight differences and we determine that the outcome here is not construction dependent. limitation under §112 ¶ 6. Pet. 10. According to Petitioner, the limitation’s function is “controlling a function of the apparatus using information about the object’s location or movement.” Id. Petitioner argues that the corresponding structure “is a processor programmed to perform the specific algorithms that accomplish this function” which “includes at least [the] Fig. 9 disclosure.” Id. at 10–11. “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. However, as discussed above, we determine that “said apparatus” refers to the handheld computer apparatus in the preamble. Thus, we accept Petitioner’s construction with the added requirement that the general purpose computer be a handheld computer apparatus. e) Means for Transmitting Information Petitioner asserts that claim 11’s limitation of “means for transmitting information” is a means-plus-function limitation under §112 ¶ 6. Pet. 11. Petitioner argues that the ’431 patent teaches the structure for performing the limitation’s function of “transmitting information” is a “wireless cellular transceiver” and thus the corresponding structure required by the claim “includes at least a wireless cellular transceiver.” Id. at 11–12 (citing Ex. 1001, 12:59–13:3). “Patent Owner does not contest” Petitioner’s construction. PO Resp. 6. We accept Petitioner’s construction as consistent with the current record.11” slip op. at 10
Patent outcomesUS 7,933,431 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,933,431 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2022-00360 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableMixed
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2022-00090 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using targets.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“The mere fact that the Specification provides an example as to how the light source is used is not a sufficient reason for us to read a limitation into the claims from the Specification. If the specification “reveal[s] a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess[,] . . . the inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)); see also Reply 19. However, this is not the case here. Patent Owner does not identify anywhere in the Specification where “light source” or “plurality of light emitting diodes” are defined as “the light source illuminates the gesture by having two or more (i.e., a plurality) LEDs of the light source emit light at the same time.” For these reasons we decline to adopt Patent Owner’s claim construction. We determine that the added limitation in claims 3, 15, and 23 should be read according to its plain and ordinary meaning. In other words, “the light source includes a plurality of light emitting diodes,” simply means exactly what it says “the light source includes a plurality of light emitting diodes.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“2. Level of Ordinary Skill in the Art Petitioner asserts that “[a] person having ordinary skill in the art (‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner argues that Numazaki ’863 teaches using a plurality of light emitting diodes to illuminate a hand gesture and to control a computer based on the gesture. Pet. 37. Petitioner also identifies a number of reasons to modify Numazaki’s light source to use Numazaki’s ’863’s plurality of light emitting diodes as the light sources are used for similar purposes. Id. at 38– 39. Patent Owner does not contest Petitioner’s positions in the Petition, other than to argue that the combination does not teach the claim limitation under Patent Owner’s construction. PO Resp. 20–22. Patent Owner further admits that Numazaki ’863 teaches a plurality of light emitting diodes used to illuminate an object. Id. at 21 (citing Ex. 1005, 16:36–57, Fig. 4). As we previously rejected Patent Owner’s attempt to read limitations from the Specification into the claims, Patent Owner’s arguments here do not apply to the requirements of the claims. We have reviewed Petitioner’s assertions with respect to these claims and the supporting evidence, and determine that Petitioner has established by a preponderance of the evidence that claims 3, 15, and 23 are unpatentable.” slip op. at 24
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079 - Apple, Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentablePTAB · Nov 28, 2022 · IPR2021-00922 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–6, 8–16, 18–26, and 28–30 are unpatentable as obvious; claims 7, 17, and 27 were not shown unpatentable because Numazaki teaches away from using ring or other targets.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(‘PHOSITA’) at the time of the ’079 Patent would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 4 (citing Ex. 1010 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. PO Resp. 6. We are persuaded that Petitioner’s declarant’s statement is consistent with the problems and solutions in the ’079 patent and prior art of record. We adopt this definition for the purposes of this Final Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim construction starts with an analysis of the claim language itself. Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (“[T]he claims define the invention.”). Claim 1 includes “providing a light source adapted to direct illumination through a work volume above the light source,” a “camera being fixed relative to the light source,” and “determining . . . the gesture performed in the work volume and illuminated by the light source.” Ex. 1001, 13:3–9. Claim 3 adds that “the light source includes a plurality of light emitting diodes.” Id. at 13:12–13. Reading claims 1 and 3 it can be seen that Patent Owner’s construction is not apparent or implied from the claim language. Neither claim requires, for example, that the gesture be illuminated by 100% of the light source, or by at least two LEDs of the light source. Claim 1 merely states that the gesture be “illuminated by the light source.” The amount of illumination is not specified.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The testimony of Petitioner’s declarant cannot overcome the strong “disparagement” that Petitioner admits Numazaki makes against the use of rings or other added targets. This is not a case where Numazaki merely expresses a general preference for an alternative invention, rather Numazaki clearly criticizes, discredits, and discourages the use of rings and other targets. In Petitioner’s own words, “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Tr. 28. Neither Petitioner nor Petitioner’s declarant address why one of ordinary skill in the art would have modified Numazaki to use a ring, in view of Petitioner’s admission that “Numazaki[’s] . . . teaching[s] . . . can obviate the need for these targets.” Id. Petitioner also fails to explain how the teachings of Numazaki related to specialized rings supports it conclusion related to a “small [generic] ring,” similar to what people routinely wear. Pet. 23–24. Numazaki discusses rings in specialized colors, as well as “color markers,” and “light emitting elements.” Ex. 1004, 3:7–9, 26–31. Neither Petitioner nor Petitioner’s declarant explain the logical steps between Numazaki’s disclosure and a “small [generic] ring” similar to what people routinely wear, or why one of ordinary skill in the art would have considered them to be the same or similar. For these reasons, we determine that Petitioner has not shown that” slip op. at 22
Patent outcomesUS 8,553,079 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,553,079 - One World Technologies, Inc., D/B/A Techtronic Industries Power Equipment v. The Chamberlain Group, Inc.Some claims unpatentablePTAB · Oct 24, 2018 · IPR2017-00126 · APJ John F Horvath · IPR · Final written decision
Claims 1–4, 7, 9–12, and 15 are unpatentable as obvious over Doppelt, AAPA, and Jacobs; claims 8 and 16 were not shown unpatentable on either ground.
RulingsFinal written decision- ExcludeMotion to exclude, deniedMotion to exclude, grantedMixed
“experience, knowledge, and training to offer expert testimony in this proceeding. Accordingly, Petitioner’s request to exclude his declaration in its entirety is denied.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Skill in the Art Relying on the opinion of its declarant, Mr. Lipoff, Petitioner argues a” slip op. at 21
- Expert testimonyPatent owner expert creditedDecided for patent owner
“sufficient knowledge, skill, experience, training, or education in systems with embedded microprocessors to establish an adequate relationship between his experience and the invention claimed in the ’319 patent. Accordingly, Dr. Davis is qualified to provide expert testimony in this proceeding. See Fed. R. Evid. 702; Montgomery Ward, 594 F.3d at 1373. Through his uncontroverted testimony, Dr. Davis has established that he has earned a Ph.D. in electrical engineering, has more than 30 years of research experience in computer architecture, digital design, and embedded microprocessors, has authored numerous technical articles on these topics, and has previously provided “expert witness testimony in cases involving embedded computer systems that are similar to the ones envisioned in the ’319 patent.” Ex. 2007 ¶¶ 6, 8, 16–17. Although Dr. Davis has no direct experience with garage door openers, he has experience with systems he considers to be related, such as “elevator controllers where you’ve got to worry about not just opening and closing the doors but the movement of the carriage or the cab that goes up and down . . . that you don’t account for in a garage door.” Ex. 1019, 34:23–35:6. In short, Dr. Davis has demonstrated that he possesses sufficient experience, knowledge, and training to offer expert testimony in this proceeding. Accordingly, Petitioner’s request to exclude his declaration in its entirety is denied.” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Accordingly, based on the evidence in this proceeding, including the Specification and claims of the ’319 patent, the specification and claims of the ’968 patent, the representations Patent Owner made to the ITC regarding the problem confronting the inventors of the ’319 patent, and Dr. Davis’ cross-examination testimony, we find the problem addressed by the inventors of the ’319 patent was how to include microcontrollers in the wall consoles of barrier movement operators that could communicate with the microcontrollers in the motor drive units over digital data buses. We further find that Jacobs teaches a solution to this very problem. In particular, Jacobs teaches a motor-driven system for moving a window shade barrier that includes a wall console (control 31/630) having a microcontroller (microprocessor 800) that sends instructions to a motor drive unit (control 45) having a microcontroller (microcontroller 540) over a digital data bus (serial link 652) to control a motor (motor 215) to move the barrier up and down. Ex. 1005, 5:15–19, 12:42–48, 13:37–39, 15:5–15, Figs. 20, 21, 24. Accordingly, Jacobs is analogous art to the invention claimed in the ’319 patent because it teaches a solution that is “reasonably pertinent to the particular problem with which the inventor was involved.” Deminski, 796 F.2d at 442. In particular, Jacobs would have logically commended itself to the attention of a person of ordinary skill in the art looking to solve the problem of including microcontrollers in the wall consoles of barrier movement operators that could communicate with the microcontrollers in the motor drive units over digital data buses. See Clay, 966 F.2d at 659. For the foregoing reasons, we conclude that Jacobs qualifies as” slip op. at 34
Patent outcomesUS 7,161,319 mixed§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,161,319 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Image Processing Technologies LLCSome claims unpatentablePTAB · May 9, 2018 · IPR2017-00336 · APJ Joni Y Chang · IPR · Final written decision
Claim 22 is unpatentable as obvious over Pirim; claims 1, 18, 19, and 29 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We begin our claim construction analysis with the plain language of the claim. In particular, the plain and ordinary meaning of “an input multiplexer adapted to receive data describing one or more parameters of the event being detected and to output data describing a selected one of the one or more parameters in response to a selection signal” encompasses two alternative structures. Ex. 1001, 29:64−67 (emphases added). The first alternative structure includes a “single parameter” multiplexer. The second alternative structure includes a “multiple parameters” multiplexer. The Specification confirms our understanding of the plain and ordinary meaning of the claim language because the Specification discloses both alternative structures. Id. at 2:51−61; 9:1−6, 11:14−48, 17:55−18:23, 20:58−66, Figs. 3, 4, 12, 13d, 14, 15a, 15b, 17, 25, 31a.” slip op. at 19
- Skill levelSkill level board ownOther
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are 6 No objective evidence of non-obviousness has been presented in this proceeding. 27 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) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In that regard, we do not observe meaningful differences between the parties’ assessments of a person of ordinary skill in the art at the time of the invention. Pet. 28–29; PO Resp. 13. For instance, both the parties agree that such an artisan would have had a degree in electrical engineering or a related field and experience in the field of image processing. Id. We further note that either assessment appears consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Our analysis in this Decision is supported by either assessment.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of non-obviousness.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Having reviewed the parties’ contentions and supporting evidence, we determine that Petitioner has established sufficiently that Pirim discloses an input multiplexer and a selection signal, as recited in claim 22. Patent Owner’s arguments and supporting evidence do not undermine Petitioner’s showing.” slip op. at 33
Patent outcomesUS 6,959,293 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,959,293
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.