• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

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

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

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

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

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

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9

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

    “We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20

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

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached

    “have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00092 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

  • BurdenMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18.” slip op. at 34

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

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

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

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

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Unified Patents Inc. v. Digital Stream IP, LLCSome claims unpatentable
  PTAB · Mar 9, 2018 · IPR2016-01749 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1, 4, 6–13, 20, and 22 are unpatentable as obvious; claims 2 and 3 were not shown unpatentable because the cited art did not establish portability or handheld use.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “We agree with Petitioner. Although Petitioner bears the burden of correctly identifying the real parties-in-interest, “[w]e generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v. EMC Corp., Case IPR2014-01254, at 6 (PTAB Mar. 3, 2015) (Paper 35) (citing Office Patent Trial Practice Guide, 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Here, Petitioner identifies in its Petition the real party-in-interest: “Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (‘Unified’ or ‘Petitioner’) certifies that Unified is the real party-in-interest.” Pet. 1. Such identification gives rise to a rebuttable presumption that Petitioner has complied with its obligation to identify all real parties-in-interest. See Zerto at 6–7. Patent Owner recognizes that “it [is] incumbent on the patent owner to come forward with some rebuttal evidence.” PO Resp. 52. In response to Petitioner’s identification of the real party-in-interest, Patent Owner contends that “this is not an instance where a petitioner’s certification in a petition can be taken at face value” because “evidence proffered by [Petitioner] in support of its position was withdrawn deliberately.” Id. at 53. We do not, however, require evidence beyond a petitioner’s identification of real parties-in-interest in the absence of rebuttal evidence that such identification is erroneous or incomplete. Petitioner’s withdrawal of Exhibit 1012 from the record does not constitute such rebuttal evidence. In view of the foregoing, we find that the circumstances here do not raise sufficient doubt about whether Petitioner has satisfied its obligation to name all real parties-in-interest. Therefore, we determine that the Petition should not be dismissed on this basis.” slip op. at 7

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

    “by applying the broadest reasonable interpretation in light of the specification of the patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard). Under that standard, claim terms generally are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer,” however, and clearly set forth a definition of the claim term in the specification. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). Petitioner proposes an express construction for the claim term “transceiver.” Pet. 10. Patent Owner does not propose an express construction for any claim term. See generally PO Resp. In light of the parties’ arguments, we determine that no term requires express interpretation to resolve any controversy in this proceeding.” slip op. at 8

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

    “Rovira teaches each of the recited claim limitations, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In that regard, Petitioner directs us to Rovira’s teaching that “it is highly desirable to communicate program content information” because “having such information as music title, composer, artist and record label is vital” to music lovers. Pet. 16 (citing Ex. 1003, 1:30–32, 2:5–10); see also Ex. 1003, 1:32–35 (“Frustration of customers, and possible loss of revenue due to subscription cancellation can occur if a subscriber has no method of knowing the title, composer or artist of the particular selection of music.”). Petitioner argues it, thus, would have been obvious to modify Schotz’s system to incorporate a signal that includes both audio data and program data, as taught by Rovira. Pet. 17; see also, e.g., id. at 21 (“[O]ne would have been motivated to (1) modify Schotz’s transmitter 4 to transmit the digital audio signal of Rovira . . . and (2) modify Schotz’s receiver 6 to receive this digital audio signal.”); id. at 23 (“[T]his modification would result in Schotz’s user interface switch 18 selecting the digital audio data . . . within the digital audio signal [of Rovira].”); id. at 25 (“It would have been obvious to utilize the tuner 110 of Rovira in Schotz for [tuning] to frequencies that Schotz is receiving based on its use of Rovira’s digital audio signal. . . . Schotz is essentially doing this already, i.e., tuning to a frequency associated with audio data.”); id. at 27 (“[I]t would have been obvious to modify Schotz to utilize Rovira’s disclosed demodulator 125 to extract the selected digital audio data and the audio program information from the carrier wave, as taught by Rovira.”); id. at 28–29 (“It would have been obvious to modify Schotz to include the digital to analog converter 160 disclosed in Rovira. . . . The receiver 6 of Schotz would necessarily need a digital to analog converter when using the digital signals disclosed in Rovira so that the user can hear the selected music.”). We are persuaded by Petitioner’s reasoning, including specifically the quoted material in the preceding string citation to the Petition, for modifying Schotz’s system to include Rovira’s signal as well as various components for processing such a signal. See Kahn, 441 F.3d at 988. We note that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and, in modifying Schotz’s system to include Rovira’s signal, would have made any necessary additional modifications such that Schotz’s system could process appropriately Rovira’s signal. See KSR, 550 U.S. at 421.” slip op. at 13

  Patent outcomesUS 6,757,913 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,757,913
• Google Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Nov 20, 2015 · IPR2014-00787 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 19–22 and 24–30 are unpatentable as anticipated by Gough; claims 1–3, 5, 7–10, 12–14, and 21 are not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

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

    “We agree with Petitioner. Although Figures 4 and 5 of the ’960 patent show keys that are partially surrounded by shadowing or shading, there is no suggestion in the Specification that the “blended shadow” recited in the claims should be limited to only this shadowing. The claim language itself, referring to a blended shadow of the representation of at least one key and the main image (see claim 24), indicates explicitly that the blended shadow incorporates both the key image and the main image and, thus, should not be limited to the shadowing surrounding the keys. Accordingly, based on the full record, we adopt Petitioner’s proposed construction of “blended shadow” as “a portion of a composite image in which the main image is visible through the overlaid image as a result of combining the data from corresponding pixels from the main and overlaid images” for the purpose of this Final Written Decision. B.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner. Petitioner does not explain adequately where the detailed analysis set forth in the Reply is made in the Petition, and, in any event, we do not find the arguments persuasive. “A patent claim is anticipated if a single prior art reference expressly or inherently discloses every limitation of the claim.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1252 (Fed. Cir. 2014). Here, Petitioner does not describe sufficiently how Gough expressly discloses using logical operators to accomplish the blending process.6 We do not agree that either Gough’s description of the blending process depicted in Figures 10a–10f (Ex. 1007, 10:23–41) or Gough’s description of using the color look-up table (id. at 14:9–19) expressly discloses using logical operators, and such express disclosure is required for anticipation. At best, Petitioner’s arguments suggest how Gough could be envisioned as using logical operators, but do not explain adequately where or how Gough expressly discloses using logical operators to carry out the blending process. For these reasons, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that independent claim 1, and claims 2, 3, 5, 7–10, and 12–14 depending therefrom, are anticipated by Gough.” slip op. at 15

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

    “3. Harrison Petitioner also argues Harrison teaches certain limitations. Pet. 44, 48, 52–55. Petitioner does not explain what Harrison adds to what is taught by Buxton. See id. at 48 (“[t]o the extent that these features may not be fully disclosed in Buxton, they are clearly disclosed in Harrison”). For purposes of this Final Written Decision, we determine the teachings of Harrison are cumulative to the teachings of Buxton, and therefore, do not address Harrison further.7 4. Claims 1–3, 5, 7–10, and 12–14 Petitioner argues that “Buxton discloses nearly all of the elements and limitations” of the challenged claims. Pet. 42. With respect to claim 1, Petitioner argues that Buxton discloses using alpha blending in accordance with the equation I = αI1 + (1-α)I2, where I is the resulting color intensity, I1 is the color intensity of the foreground image pixel, I2 is the color intensity of the background image pixel, and α is the specified transparency level between 0 and 1. Id. at 43–44 (citing Ex. 1009, 17:17–28). Petitioner argues that Buxton’s alpha blending “permits pixels to be ‘dedicated simultaneously’ to both images in order to produce a composite image” and is an “example of an operation using logical operators to provide different blending effects.” Id. at 44 (citing Ex. 1009, 16:63–17:4). Petitioner contends that although “Buxton may lack explicit disclosure of . . . a touchactivated device (required in claims 1 and 26),” Bier discloses that a touch screen is interchangeable with a mouse. Id. at 44–45. Petitioner also contends that Bier discloses a keyboard superimposed over a display. Id. at 7 Because the asserted ground includes Harrison, we continue to include it as part of our overall analysis.” slip op. at 23

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

    “After considering all evidence and arguments, we agree with Patent Owner. In particular, we determine that Petitioner’s arguments do not persuade us that Buxton’s alpha blending equation uses operators that manipulate binary values at the bit level, consistent with our construction of “logical operators.” The alpha blending equation unquestionably involves arithmetic operations, which we find differ from logical operations. Furthermore, Petitioner has not shown persuasively whether any logical operations overlap with any arithmetic operations. Therefore, we agree with Patent Owner’s contention that Buxton’s alpha blending equation does not use logical operators.” slip op. at 24

  Patent outcomesUS 6,121,960 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 6,121,960
• C&D Zodiac, Inc. v. B/E Aerospace, Inc.Some claims unpatentable
  PTAB · Oct 26, 2015 · IPR2014-00727 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 are unpatentable as obvious over Betts; claims 8, 20, 30, and 38 were not shown unpatentable over Betts and the Orange Book.

  RulingsFinal written decision

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

    “The term “enclosure unit” encompasses lavatories, aircraft closets, and aircraft galleys. Given the grounds of unpatentability that Petitioner raises, there is no need to further construe this term. 2. “lavatory stall unit” Whereas independent claim 1 recites “enclosure unit,” independent claim 9 recites “lavatory stall unit.” Patent Owner proposes the latter be construed as “a single room, enclosed on all sides, having a toilet and washbasin and large enough to fit a person inside.” PO Resp. 12. For reasons similar to those with respect to “enclosure unit,” we reject Patent Owner’s proposed construction of “lavatory stall unit.” Further, given the grounds of unpatentability that Petitioner raises, there is no need to provide an express construction for this term. More specifically, Petitioner does not rely on any particular prior art lavatory. Indeed, Petitioner does not rely on either of the asserted references to teach a “lavatory stall unit,” instead relying on the knowledge and skill of a person of ordinary skill in the art.” slip op. at 9

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

    “These proposed constructions would render the claim language “in a vertical plane” meaningless because tilting a seatback between an upright position and another position would have no effect on the shape of the aft surface of the seatback. Therefore, we do not adopt them. See Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1115 (Fed. Cir. 2002) (proposed construction that rendered a portion of the claim language meaningless held improper). Rather, we construe “in a vertical plane” according to its ordinary and customary meaning and consistent with the specification, which contrasts a forward wall in a vertical plane (see Fig. 1—the prior art) against a recessed forward wall (see Fig. 2—an embodiment of the claimed invention). In sum, the full limitation at issue encompasses an aft portion (in the case of claim 1) and an aft portion with an exterior aft surface (in the case of claims 9, 21, and 31) that has a flat shape but which is not within a vertical plane. This is within the broadest reasonable construction in light of the Specification, which discloses a substantially conforming recessed forward wall positioned behind the seat (see Ex. 1001, Fig. 2), as opposed to a wall that is flat in a vertical plane (see id. at Fig. 1). 4. “forward wall portion is shaped to substantially conform to the shape of the” slip op. at 10

  • BurdenFwd mixedMixed

    “As discussed below, Petitioner has shown by a preponderance of the evidence that claims 1, 3–7, 9, 10, 12–14, 16–19, 21, 22, 24–29, 31, and 33–37 of the ’838 patent are unpatentable as obvious over Betts. But, Petitioner has not shown by a preponderance of the evidence that claims 8, 20, 30, and 38 are unpatentable as obvious in view of Betts and the Orange Book, as Petitioner has not established that the evidence relied upon within the Orange Book is a printed publication.” slip op. at 3

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

    “motivated to efficiently use space on an aircraft, as evidenced by Betts, “to provide more room for passengers.” Id. ¶ 65 (quoting Ex. 1003, 1:6–7). Mr. Anderson further testifies that Betts teaches the person of ordinary skill in the art a recessed forward wall configuration that uses space more efficiently than a flat configuration, and that a person of ordinary skill in the art would have been motivated to apply the recessed configuration to other aircraft enclosures, including lavatories. Patent Owner argues that a person of ordinary skill in the art “would have been discouraged from attempting to tailor Betts’ divided space design to any lavatory stall unit (or any other enclosure unit) because Betts required separate enclosures divided both functionally and spatially.” PO Resp. 29. But, Petitioner’s ground of unpatentability is not premised on whether it would have been practical or possible to convert Bett’s “divided space” (i.e., its overhead coat compartment and floor luggage space) into a lavatory. Rather, Petitioner argues that it would have been obvious to apply Bett’s recessed forward wall design to other aircraft enclosures, including a lavatory. Pet. 19 (“One of ordinary skill in the art would recognize that the teachings of the McDonnell Douglas patent [i.e., Betts] are equally applicable to the forward walls of other enclosure units, such as lavatories or galleys.”) (citing Ex. 1009 ¶¶ 65–68); cf. In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the 15 features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”).” slip op. at 15

  Patent outcomesUS 8,590,838 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,590,838
• Motorola Mobility LLC v. Intellectual Ventures I LLCSome claims unpatentable
  PTAB · Sep 9, 2015 · IPR2014-00501 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7, 9–12, and 16–18 were held unpatentable; claims 4–6, 8, 13–15, and 19–21 were patentable because the cited art did not disclose the required transmission behavior.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “With respect to entitlement to any earlier effective priority date, a party must identify, specifically, the disclosure in ancestral applications “which do not share the same disclosure,” and which allegedly show § 112 support for the relied-upon priority date. See, e.g., Polaris Wireless, Inc. v. TruePosition, Inc., Case IPR2013-00323, slip. op. at 29 (PTAB Nov. 15, 2013) (Paper 9). To link the Ayyagari Provisional with Ayyagari ’508, Petitioner relates the claims of the ’392 patent to Ayyagari ’508, and then, separately, relates the claims of the ’392 patent to the Ayyagari Provisional. This triangulation does not meet Petitioner’s burden of showing that Ayyagari ’508 is entitled to the earlier filing date of the Ayyagari Provisional. Specifically, while the cited portions of the Ayyagari Provisional and Ayyagari ’508 may each disclose a certain claim limitation, the disclosures may be in different embodiments or contexts such that the cited portion of the Ayyagari Provisional does not provide an adequate ancestral basis for the cited portion of Ayyagari ’508. Petitioner should not expect the Board to search the record and cull the evidence necessary to support Petitioner’s arguments. Amazon.com, Inc. v. Personalized Media Comm., LLC, Case IPR2014-01533, slip op. at 6 (PTAB April 20, 2015) (Paper 16); cf., DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). Petitioner has not, in its case-in-chief, linked the Ayyagari Provisional disclosure with the Ayyagari ’508 disclosure in a sufficient manner to meet its burden. Petitioner has not shown that Ayyagari ’508 is entitled to a priority date any earlier than its actual filing date of February 22, 2001.” slip op. at 8

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “explain the alleged reduction to practice embodied in Exhibit F. In evaluating a Patent Owner’s reliance on a declaration, we take into consideration whether Petitioner has had an opportunity to cross-examine the declarant. Amneal Pharms., LLC v. Endo Pharms. Inc., Case IPR2014- 00360, slip op. at 4 (PTAB December 3, 2014) (Paper 39). If Patent Owner does not produce a declarant for cross-examination, we will give that declaration little to no weight. See Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., Case IPR2013-00576, slip op. at 3 (PTAB Sept. 5, 2014) (Paper 36). Petitioner, upon requesting deposition availability for Mr. Wentink, was informed by Patent Owner that “[w]ith respect to Mr. Wentink, Patent Owner does not believe it is required, under the rules, to produce Mr. Wentink for deposition.” Ex. 1017 (corrected), 1. No further explanation of Patent Owner’s interpretation of the rules, or regarding availability of Mr. Wentink for deposition, is before us. Although we have no reason to question Dr. Tewfik’s credentials, his value as a witness is compromised heavily by his distance from and post hoc evaluation of the circumstances of the alleged reduction to practice of the invention. Patent Owner is correct that it was not required, under the rules, to make Mr. Wentink available for cross-examination. Under these circumstances, however, we accord Mr. Wentink’s declaration little weight.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner

    “Although the ultimate determination of whether a document is a printed publication is a question of law, it is a question that is closely based on the underlying facts and circumstances surrounding the disclosure of a document to members of the public. Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014); SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1192 (Fed. Cir. 2008); In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Public accessibility is a key question in determining whether a document is a printed publication and is determined on a case-bycase basis. Suffolk Techs., 752 F.3d at 1364. To qualify as a printed publication, a document “must have been sufficiently accessible to the public interested in the art.” In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” SRI Int’l, 511 F.3d at 1194 (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)).” slip op. at 16

  • ExcludeMotion to exclude, deniedMixed

    “The moving party has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion to exclude is neither a substantive sur-reply, nor a proper vehicle for arguing whether a reply or supporting evidence is of appropriate scope. Zynga Inc. v. Personalized Media Commc’ns, LLC, IPR2013-00162, slip op. at 3 (PTAB Aug. 28, 2013) (Paper 15); Berk-Tek LLC v. Belden Tech., Inc., IPR2013-00057, slip op. at 3 (PTAB Oct. 31, 2013) (Paper 39). Patent Owner’s objections to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017 go more to the weight that the information disclosed therein should be afforded, rather than to its admissibility. It is within our discretion to assign the appropriate weight to be accorded to the information in Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. The Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Gnosis S.P.A. v. S. Ala. Med. Sci. Found., IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64); see also Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received.”). We, thus, decline to exclude Exhibits 1005, 1006, 1010, 1013, 1014, and 1017. Moreover, we agree with Petitioner that Exhibits 1010, 1013, and 1014 are evidence that properly responds to arguments made by Patent Owner in its Response. Resp. to Mot. to Excl. 11, 12–14; 37 C.F.R. § 42.23. Regarding Exhibit 1006, we are persuaded by Petitioner’s arguments that the testimony of Mr. Worstell (Ex. 1010) authenticates Exhibit 1006. Resp. to Mot. to Excl. 7–8. Similarly, we are persuaded that Exhibit 1010, paragraphs 13–15, reflect testimony based on Mr. Worstell’s personal knowledge and should not be excluded. Accordingly, the Motion to Exclude is dismissed as to paragraphs 23 and 59 of Exhibit 1008, paragraph 6 of Exhibit 1019, and Exhibit 1016, and denied as to Exhibits 1005, 1006, 1010, 1013, 1014, and 1017.” slip op. at 31

  Patent outcomesUS 7,136,392 mixed
  § 102 anticipation
  Patents in suitUS 7,136,392
• Square, Inc. v. Rem Holdings 3, LLCSome claims unpatentable
  PTAB · Jul 7, 2015 · IPR2014-00312 · APJ Denise M Pothier · IPR · Final written decision

  Claims 1, 2, 6, 7, and 10–17 are unpatentable under §103 over Lekernel and Padilla, alone or with Wallner; claims 3–5, 8, and 9 are not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed

    “We agree that the McLaughlin declaration does not outline specific qualifications of one skilled in the art. Ex. 1015 ¶ 9. However, Dr. McLaughlin states, and we agree, that “the level of ordinary skill in the art is evidenced by the prior art references.” Id. and Pet. Reply 3 (citing In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We also agree with Petitioner that Patent Owner has unduly narrowed the qualifications of one of ordinary skill. See Pet. Reply 1. In particular, and in contrast with the above assertions, Patent Owner describes Mr. Bourdeauducq as an expert in the relevant field. PO Resp. 1 (stating “Sebastien Bourdeauducq (See Exhibit 2033), (and an actual expert in the Relevant Field)”). Yet, Mr. Bourdeauducq lacks several of the purported qualifications of an ordinarily skilled artisan that Patent Owner asserts. Pet. Reply 2. For example, Mr. Bourdeauducq was about eighteen years old when he wrote the Lekernel article, had no engineering degree, had about one week of experience with magnetic stripe card readers, and had a general consumer understanding of credit card processing. Id. (citing Ex. 1064, 12:14–15:20). Based on the record, we determine that the level of skill in the art is more aligned with a high school or first-year engineering student taking a class covering the topic of basic circuit analysis and having a general, consumer knowledge of magnetic card readers.4 Mr. Bourdeauducq, Dr. McLaughlin, Dr. Morley, and Mr. Wood all have these qualifications. Ex. 2033 ¶ 3 (referring to Exhibit A) and Ex. 1064, 15:16–20; Ex. 1015 ¶ 2 and Ex. 2035, 88:15–18; Ex. 2031 ¶¶ 6, 9; Ex. 2032 ¶¶ 7–8. As such, contrary to Patent Owner’s assertions, we disagree that the McLaughlin declaration should be given no weight. PO Resp. 11. Also, regardless of whether Dr. McLaughlin has immediate knowledge of certain details about magnetic card readers (e.g., card reader manufacturers, frequency characteristics of a read head signal when a card is swiped), we disagree that he is not qualified as an ordinarily skilled artisan. See PO Resp. 16, 19 (quoting portions from Ex. 2035); see Pet. Reply 1–2.” slip op. at 12

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

    “§§ “Requisites,” “Hardware,” and “Improvements” and Ex. 1015 ¶¶ 39–42). Patent Owner does not dispute these findings related to Padilla or reasons to combine the references. See generally PO Resp. The record also reflects that conditioning signals within a circuit to achieve a desired result was known and, given the combined Lekernel/Padilla system, one skilled in the art would have conditioned signals sent from the card reader to the microphone input based on the cell phone’s characteristics. See Dec. on Inst. 12, 14–15 (citing Pet. 17–18 (discussing proving an analog signal in an acceptable processing range) and citing Ex. 1015 ¶ 29). In the Decision to Institute, we discussed cell phone characteristics, such as Padilla’s, and how these characteristics relate to whether signal attenuation is needed for the phone’s input. See Dec. on Inst. 14 (citing Ex. 1015 ¶ 29). For example, Padilla suggests using phones other than “the Siemens MC60” to turn a mobile phone into a magnetic stripe reader. Ex. 1010 § “Foreword.” Accordingly, based on the cell phone selected and its characteristics, we determine that one skilled in the art would have recognized that conditioning signals inputted and received by a cell phone’s microphone input may be necessary. Dec. on Inst. 12 (citing Pet. 17), 14. Specifically, we concluded that “an ordinarily skilled artisan would have recognized that the characteristics of the cell phone’s microphone input impact whether attenuation between the read head and the cell phone’s microphone input is needed.” Dec. on Inst. 14; see also Pet. 21–22, 24–25. The record includes two particular examples where one skilled in the art would have added resistance to Lekernel’s circuit and attenuated the signal received by the phone of the combined Lekernel/Padilla system. See Dec. on Inst. 14 (citing to Ex. 1015 ¶ 29). First, Dr. McLaughlin describes a known technique of providing the microphone input an acceptable level for the cell phone using a voltage divider by placing a resistor at the output of coil 24 or the read head. Ex. 1015 ¶ 16. To be clear, in this scenario, the resistor would be added outside Figure 2’s amplifier in Lekernel to achieve a voltage drop and to “to ensure the signal falls within a range of signals detectable and usable by a cell phone,” preventing damage to a recipient device. See Ex. 1015 ¶¶ 9, 14. Dr. McLaughlin further discusses impedance matching the card reader circuit with the cell phone’s microphone input when the cell phone has internal amplification. Dec. on Inst. 14 (citing Ex. 1015 ¶ 29); Ex. 1015 ¶¶ 28–29. Given the background knowledge of an ordinary artisan, one skilled in the art would have understood to add resistance to the combined Lekernel/Padilla system (e.g., after the amplifier in Lekernel’s Figure 2) for attenuating the signal sent to the microphone input in order to achieve an acceptable level for the cell phone and/or to impedance match the read head device with the cell phone.” slip op. at 18

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “In the context of this proceeding, we do not agree with Patent Owner’s contention that when the marketed product embodies and is coextensive with the claimed features, a secondary consideration factor (e.g., commercial success) is a presumptively attributed to the claimed invention. PO Resp. 49–50. For example, In re Huang, 100 F.3d 135 (Fed. Cir. 1996) states “that [commercial] success is relevant in the obviousness context only if there is proof that the sales were a direct result of the unique characteristics of the claimed invention-as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” Id. at 140 (emphasis added); see also In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (indicating there is no nexus where the evidence results from something other than what is both claimed and novel in the claim). Thus, in establishing a nexus with a secondary consideration in this proceeding, Patent Owner needs to show a specific feature of the claim is attributable to the commercial success of Square’s card reader and not just that the device is coextensive with the claimed features. Patent Owner points to an interview of Mr. Jack Dorsey, described as Square’s CEO. PO Resp. 51–52. In the interview and in response to asking what Square was, Mr. Dorsey states “OK, well [ah] Square is [ahh] a very simple little device that plugs into your iPhone or Android device and allows anyone to accept credit card immediately wherever they are.” PO Resp. 52 (citing Ex. 2047). Patent Owner asserts that this discussion establishes a nexus to the claimed “output plug” feature. Id. Yet, this statement just describes the plug and does not relate the plug itself to any of Square’s commercial success. The statement is also vague as how the device plugs into a phone, such that there is an insufficient tie to the recited “output plug, adapted to be inserted into a jack associated with a microphone input associated with a cell phone” in claim 1. Ex. 1001, 6:66– 67 (emphasis added). Although stating the reader is “very simple” and “little,” Patent Owner has not demonstrated these features are claimed and are a novel or unique feature of the claims — a requisite needed to outweigh the case for obviousness based on commercial success.” slip op. at 25

  Patent outcomesUS 8,584,946 mixed
  § 102 anticipation§ 103 obviousness
  Patents in suitUS 8,584,946

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.