• Digital Global Systems, Inc. v. Deepsig, Inc.Some claims unpatentable
  PTAB · Mar 6, 2026 · IPR2024-01358 · APJ William V Saindon · IPR · Final written decision

  Claims 1–3, 7–11, 15–19, 23, and 24 are unpatentable as obvious; claims 4–6, 12–14, and 20–22 were not shown unpatentable because the prior art did not teach the claimed received-signal feedback and transmitter-model update.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that: Persons of ordinary skill in the art (“POSITA”) would have a bachelor’s degree in electrical engineering, computer engineering, or an equivalent degree and at least two years of experience working with of radio communication systems and machine learning. Additional work or research experience can substitute for less or different education, and vice-versa. Pet. 3–4 (citing Ex. 1003 ¶¶ 33–34). Patent Owner does not appear to challenge this level of skill. We use Petitioner’s definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’704 patent.” slip op. at 7

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

    “parameters “associated with the base station.” PO Resp. 31–32. In particular, Patent Owner argues that a transmitter “implemented in a base station” is not “associated with the base station.” Id. at 31. Petitioner argues that Patent Owner offers no reason to believe that a transmitter “implemented in a base station” is not “associated with the base station.” Pet. Reply 4–5; see also id. at 3–6 (entire argument). A plain reading of a “model associated with a base station” would encompass a model that operates in a base station. We do not see anything in the ’704 specification that would indicate “associated with” has any special meaning, or has a meaning contrary to our understanding of the plain meaning. We do not see the word “associated” outside the claims, whereas we see the word “implement” throughout the specification, generally in reference to an actual use of a model (consistent with our plain reading). See, e.g., Ex. 1001, 5:35–39, 6:3–17, 10:55–11:3 (discussing “implementations” where the model or some other feature of the system is used in a particular way). Accordingly, we construe a model “implemented in a base station” to be “associated with the base station.”” slip op. at 12

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

    “scenarios” (see PO Resp. 16–21), Patent Owner argues that “Jüschke does not disclose any association of the weight or bias parameters, . . . to any deployment scenario, and . . . base station” (id. at 19). For the reasons explained in our claim construction section above, we construe “deployment scenarios” to include “inline mode” models located within a base station, according to the list of deployment scenarios set out in the ’704 patent. See Ex. 1001, 2:38–65. The in-line deployment scenario depicted in Figure 6A of the ’704 patent bears a striking resemblance to the arrangement depicted in Figure 1 of Jüschke. In both figures, the analog radio signal is fed directly into the model and then the model directly outputs the signal to the amplifier. Compare Ex. 1001, Fig. 6A, with Ex. 1005, Fig. 1. As construed, the “deployment scenarios” represent the physical configurations of the device in which the model is found, such as “in-line.” Petitioner shows by a preponderance of the evidence that Jüschke’s similar in-line configuration is a “deployment scenario” as claimed because it teaches an inline model for a cellular system transmitter (i.e., base station). Pet. 26–29 (citing, e.g., Ex. 1005, Fig. 1, ¶¶ 6, 59; Ex. 1003 ¶¶ 146–147); see also Ex. 1001, 2:37–41 (stating that “[t]he particular deployment scenario[] may be . . . sending a radio transmission from a cellular base station that includes the . . . model . . . in an inline mode”).” slip op. at 26

  • BurdenNot shown unpatentable

    “Based on our claim construction analysis of claim 4, above, we agree with Patent Owner that claim 4 requires an actually transmitted signal and an update of the transmitter’s model. This claim construction eliminates Petitioner’s position regarding Holt teaching a modeled signal. See, e.g., Pet. Reply 17–23. We then turn to Petitioner’s argument that Holt teaches updating a model using an actually transmitted signal. See Pet. 59–60. There, Petitioner relies on a disclosure in Holt of an “actual communication channel 302 used to train the channel model 208.” Ex. 1006, 18:1–2. This is depicted in Figure 6 of Holt, in connection with a “fourth loss function” which is used to “train the decoder model.” Id. at 18:42–48; see generally id. at 17:58–18:51 (describing Figure 6). Whether training the channel model or the decoder model, Holt here does not disclose using the actual communication channel to train the encoder, i.e., transmitter. In sum, we find that Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “obtaining a received radio signal,” and even if it did, Petitioner has not shown by a preponderance of the evidence that the prior art describes the claimed step of “updating the value of the model parameters” in the manner required by claim 4. Claims 12 and 20 are nearly identical to claim 4, and Petitioner’s ground fails for similar reasons. See Pet. 76. Claims 5, 6, 13, 14, 21 and 22 depend from claims 4, 12, and 20, and Petitioner’s ground fails for similar reasons as those claims. See id. at 77–80.” slip op. at 31

  Patent outcomesUS 11,018,704 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 11,018,704
• Kia Corp. / Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Jan 26, 2026 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–5 and 7–21 are unpatentable over Kleve-based grounds; claim 6 was not shown unpatentable because the record did not support obviousness of key sharing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Here, Petitioner asserts a person of ordinary skill in the art would have “had at least a four-year undergraduate degree in electrical engineering, automotive engineering, or a closely related field and at least two years of experience in the field of access control systems, vehicle electronics, and/or cryptography.” Pet. 8–9 (citing Ex. 1004 ¶ 85). Dr. Almeroth supports Petitioner’s position and further testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1004 ¶ 85. Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and appears to apply Petitioner’s proposed level of skill. See PO Resp. Patent Owner’s declarant, Dr. Malek, explicitly adopts Dr. Almeroth’s level of skill in the art but states that his opinions would be applicable under any reasonable definition for an ordinarily skilled artisan at the critical time. See Ex. 2021 ¶ 38. For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’659 patent and the prior art of record.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “We do not agree with Patent Owner’s argument that Dr. Almeroth’s declaration testimony contradicts Kleve. See PO Resp. 27–29. Rather, as discussed previously, we find that Kleve’s vehicle owner can set a restriction, such as the rental start period, prior to step 214 in Kleve’s Figure 2 and that such restrictions can be associated with the e-key. We also do not agree with Patent Owner’s argument that (1) Dr. Almeroth’s declaration testimony contradicts his deposition testimony or that (2) Dr. Almeroth “admitted his testimony was wrong.” See PO Sur-Reply 7 (citing PO Resp. 47–48 (citing Ex. 2022, 27:5–10, 27:21–28:1; Ex. 2021 ¶ 96)). In a particular embodiment to which Dr. Almeroth was citing, he noted that the e-key is always generated after the rental agreement. See Ex. 2022, 26:14– 20. Then the following exchange occurs: Q. So you use typically and always. So always does not refer to all of the embodiments of Kleve, is that fair? A. I think a person of skill in the art could read Kleve and understand that there are probably multiple ways in which the flow of actions among the parties could occur. And I think thinking about a real world scenario, in most cases you have an agreement before you would generate an eKey, but maybe, maybe not. I don’t -- I don’t know that the real world is necessarily cut and dry. So reading -- a person reading Kleve would understand it’s describing embodiments where it’s scenario, but I don’t know that it would necessarily be a hard and fast rule in every embodiment or in the understanding a person of skill in the art would have. Id. at 28:3–20. There is nothing in the deposition testimony by Dr. Almeroth that appears inconsistent with his declaration testimony nor does there appear to be the kind of admission touted by Patent Owner. Instead, it is Dr. Malek who takes an overly narrow view of Kleve that appears inconsistent with Kleve’s disclosure when read as a whole. See, e.g., Ex. 2021 ¶¶ 82–88. Therefore, we do not credit or agree with Dr. Malek’s testimony that Kleve fails to teach the concept of a virtual key created with the agreed-upon rental period as a restriction. See id. ¶ 57. Thus, based on the entire trial record, we find that Petitioner has” slip op. at 33

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

    “After review of the arguments and evidence, we agree with Petitioner’s position. Specifically, we agree that (1) both Kleve and Hatton are directed to use of electronic key systems for vehicles (see Ex. 1005 ¶¶ 7– 9, 39, 63; Ex. 1008, 1:48–52, 1:61–2:2, 5:25–34) and (2) encrypted communications would have been understood to be effective in preventing unauthorized access to the vehicle, something that is taught explicitly by Hatton (see Ex. 1008, 9:50–63). Given these disclosures by Kleve and Hatton, we find that a person of ordinary skill in the art would have had a at the challenged claims. Accordingly, we find that a person of ordinary skill in the art at the critical time would have had a reason to combine the teachings of Kleve with that of Hatton.” slip op. at 36

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

    “We agree with Patent Owner. Petitioner’s argument appears to be purely hindsight analysis based on the teachings of the ’659 patent and the limitations of challenged claim 6 because there is insufficient evidence or teachings in the cited prior art to suggest the sharing of virtual keys. Petitioner’s argument that having “rental microbusiness” implemented as a “smart phone application” that enables sharing virtual keys is insufficient to show obviousness, because, as noted by Patent Owner, certain embodiments in Kleve appear to discourage or even hinder the sharing of virtual keys. These embodiments require the use of credentials associated with the virtual key, where the credentials can be “facial recognition, voice print recognition, matrix barcode (ex. two-dimensional code), code word or phrase for speech recognition, temporary mobile web login IDs and password, or other types service.” See Ex. 1005 ¶ 37. Dr. Almeroth testifies that multiple people could be authorized on the same vehicle if they collectively rent a vehicle and that a person of ordinary skill in the art would “have been motivated to enable each user to share the virtual key with other authorized users associated with the same rental request.” Ex. 1004 ¶ 55. But given Kleve’s disclosure that the system handles key generation and distribution (Ex. 1005 ¶ 39), the evidence does not show that a person of ordinary skill in the art would have wanted to give this control to each authorized user who has received an e-key. “It is impermissible to use the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art so that the claimed invention is rendered obvious.” Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)). Kleve’s teachings undermine Petitioner’s position, and do not support a finding of obviousness. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Kleve alone or in combination with Hatton would have rendered dependent claim 6 obvious to a person of ordinary skill in the art at the critical time.” slip op. at 39

  Patent outcomesUS 11,738,659 mixed
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,738,659
• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand

  Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.

  RulingsRemand decision

  • RemandMixed

    “The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12

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

    “The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13

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

    “Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17

  Patent outcomesUS 10,222,037 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,222,037
• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–11 and 13–19 are unpatentable as obvious over Ho and Aoki; claims 12 and 20 were not shown unpatentable over Jiau and Aoki or Jiau and Kim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner argues for a slightly different level of ordinary skill in the art: “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with one to two years of experience developing or programming video games or video game systems, or similar types of computer systems.” PO Resp. 2 (citing Ex. 2006 ¶ 29). Patent Owner further argues that the person having ordinary skill in the art “may have additional education that might substitute for some of the experience, and additional experience might substitute for some of the educational background.” Id. (citing Ex. 2006 ¶ 29). According to Patent Owner, Petitioner’s proposal does not require experience in programming video games. Id. at 3. However, Patent Owner states, “[t]his difference does not materially affect the analysis presented below.” Id. We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 9

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

    “Patent Owner argues that the plain and ordinary meaning of “downloading” excludes “real-time fetching of data by a client from a server system.” PO Resp. 34; see also PO Sur-reply 16–17; Tr. 32:22–34:7. Because we need not expressly construe any claim terms, we do not construe any terms of the ’662 patent. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

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

    “date of the ’662 patent, Ho is not a “printed publication” within the meaning of 35 U.S.C. § 311(b). PO Resp. 30–33; PO Sur-reply 15–16. The Federal Circuit has rejected this argument, holding that: a published patent application is, by its literal terms, a “printed publication.” So, when § 311(b) permits IPR challenges based upon “prior art . . . printed publications,” it includes within its literal scope challenges based upon a published patent application. And, by virtue of § 102(e)(1), a published patent application—this specific type of “printed publication”—is deemed prior art as of its filing date. Therefore, the plain language of §§ 311(b) and 102(e)(1) permits IPR challenges based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. Lynk Labs, Inc. v. Samsung Elecs. Co., 125 F.4th 1120, 1127 (Fed. Cir. 2025). Thus, Petitioner asserts permissible grounds of unpatentability under 35 U.S.C. § 311(b) by arguing that claims 1–20 are unpatentable under 35 U.S.C. § 103(a) on the basis of Ho, which is a prior art printed publication, and either Aoki or Kim.” slip op. at 11

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

    “A person having ordinary skill in the art would have combined Aoki’s teaching of using user-identification information as part of the request for an advertisement with Ho’s system, which also teaches a client device sending information to a server to request hot spot information, such as advertisements. See Ex. 1003 ¶¶ 103–107, 111, 114, 117. Because both Ho and Aoki are directed to improvements in game design and monetization from using advertisements (id. ¶ 106; Ex. 1004, 1:26–28; Ex. 1005 ¶¶ 6–8), a person having ordinary skill in the art would have looked at both Ho and Aoki and combined the relevant features with a reasonable expectation of success (Ex. 1003 ¶¶ 103, 106, 117). A person having ordinary skill in the art would have appreciated that using Aoki’s teaching of sending user-identification information with Ho, which includes sending information with a request for information relating to interactive information elements (hot spots), allows for targeted advertisements, which was a known advantage in advertising. Id. ¶ 117; Ex. 10089 ¶¶ 54–55 (describing advantages of targeted advertising).” slip op. at 26

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentable
  PTAB · May 3, 2022 · IPR2020-01624 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–16 and 18 are unpatentable as obvious over Gauthier, Groen, and Shumarayev, with Huang for certain dependent claims; claim 17 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “speed links, or equivalent academic experience.” Pet. 5 (citing Ex. 1003 ¶¶ 18–20). At institution, we applied Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Inst. Dec. 8. During the trial, Patent Owner stated that it does not object to this level of ordinary skill. PO Resp. 7. Based on the parties’ agreement on this issue, we maintain our determination from the Institution Decision and apply that level of ordinary skill in the analysis below.” slip op. at 5

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

    “The parties dispute the scope of “independent.” Petitioner argues that using separate current setting signals for separate devices describes the “independent” aspect of these claims. Pet. 31–35; see also Pet. Reply 3–9 (setting forth claim construction arguments). Patent Owner argues that the ’132 patent does not set forth a special definition for “independent” and, therefore, that the plain meaning applies—“not determined or influenced by someone or something else.” PO Resp. 9–10 (citing Ex. 2005). Thus, Patent Owner argues that “independent of” means “not determined or influenced by.” PO Resp. 8–17; PO Sur-reply 2–7. As discussed below, we conclude that Petitioner has proven obviousness of the subject matter in claims 1–16 and 18 under Patent Owner’s proposed construction, and the deficiencies in Petitioner’s contentions for claim 17 are not related to the definition of “independent.” Thus, we need not resolve this claim construction dispute to issue a final written decision on all claims. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms ... that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “At institution, we preliminarily agreed with Petitioner that these phrases are means-plus-function. Inst. Dec. 13–15. Patent Owner argues that these phrases are not means-plus-function limitations and that “[e]ach claimed ‘current selection module’ is simply a circuit or collection of circuit[r]y that selects current, with additional structural limitations provided by the surrounding claim language.” PO Resp. 17–21. Patent Owner, however, also states that “[t]he Board need not construe the ‘current selection module’ terms because analysis of the prior art does not turn on claim construction.” PO Resp. 18. Patent Owner states it “is not disputing that the prior art discloses ‘current selection modules,’ per se, regardless of which claim construction the Board adopts”; rather, Patent Owner contends “that the current selection modules in the prior art fail to satisfy other claim requirements.” PO Resp. 18. Because there is no dispute between the parties the resolution of which turns on whether the “current selection module” phrases of claims 1 and 12 invoke § 112 ¶ 6, we need not resolve this issue to decide the patentability challenges before us. See Realtime Data, 912 F.3d at 1368.” slip op. at 7

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

    “for the combination and that “Petitioner cites no disclosure from any of the references or background materials suggesting that the cited current supplies were known, interchangeable alternatives.” PO Resp. 60–61. We disagree. As discussed above, Shumarayev discloses separate and independent programmable current supplies for the main driver and the pre-emphasis driver. Ex. 1007, 6:10–17, 6:24–27, Fig. 6. This is an alternative to Groen’s disclosure of separately controlled current select modules (DACs 400 and 402) where DAC 402’s input reference current is the current that is output from DAC 400. Ex. 1004, 5:4–8, Fig. 4. Patent Owner also argues that making a control circuit programmable is more complex than making a non-programmable circuit because “a designer would need to add means to store what is programmed, thus involving more than simple PMOS and NMOS transistors” and requiring additional fabrication steps. PO Resp. 62–63 (citing Ex. 2001 ¶ 70). Both Groen and Shumarayev, however, disclose programmable current sources for pre-emphasis and drive circuitry. Groen’s DAC 400 produces a reference current based on a 5-bit code, and Groen’s DAC 402 produces an emphasis current based on a 3-bit code. Ex. 1004, 4:51–58, Fig. 4. Shumarayev’s driver 44a includes programmable current supplies 56a and 56b, and pre-emphasis driver 44b includes current supplies 58a and 58b that produce an “amount of current that . . . may be controlled by programming how Petitioner’s reliance on Shumarayev’s teachings of separate and independent current sources for main and pre-emphasis drivers introduces any complexity due to the need to make the current sources programmable. Patent Owner also points to Shumarayev’s statement that “there may be consequences of providing too much programmable circuitry” (Ex. 1007, 8:3–4) as suggesting that a person of ordinary skill in the art would not have had a reasonable expectation of success in combining Shumarayev’s teachings with Groen and Gauthier. PO Resp. 64 (quoting Ex. 1007, 8:3–4). According to Patent Owner, Shumarayev’s statement “suggests that the inventors of the ’132 patent, who were able to build successful circuits with independently programmable primary and pre-emphasis current levels, had to overcome various design challenges.” PO Resp. 64 (citing Ex. 2001 ¶ 72). We disagree with Patent Owner’s arguments. Groen discloses programmability to address “a need in the art for a driver circuit that can select from numerous possible data communication operating modes.” Ex. 1004, 1:32–38. The whole purpose of Groen is to accommodate different driver modes by controlling the drive and emphasis currents. Ex. 1004, 3:50–59 (Table 1), 4:1–13 (Table 2), 5:55–67. Shumarayev, similarly, teaches programmable circuitry to accommodate different “I/O standards such as LVPECL, LVDS, PCML, etc.” Ex. 1007, 6:20–23, 7:57–67. Shumarayev then teaches a simplifying alternative, namely, “replac[ing] some or all of the programmable circuitry in I/O circuits 16 with hardwired circuitry.” Ex. 1007, 8:4–7. Thus, we hardly see why a person of ordinary skill in the art would be discouraged from the combination by the alleged complexities of programmability when both Groen and Shumarayev are expressly directed to such programmability.” slip op. at 32

  Patent outcomesUS 6,975,132 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 6,975,132
• Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentable
  PTAB · Apr 13, 2022 · IPR2020-01596 · APJ John F Horvath · IPR · Final written decision

  Claims 1–5, 8–12, and 15–17 are unpatentable as obvious over OneChip and ORT8850; claims 6, 7, 13, and 14 were not shown unpatentable because QL80FC was excluded.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “We agree with Petitioner. Dr. Nelson’s opinion that a person skilled in the art would have had at least the education and experience indicated necessarily encompasses persons having the minimum level of education and experience. It is axiomatic that something that was known or would have been obvious to a person having a minimum level of education and experience would necessarily have been known or obvious to a person having the same or a higher level of education or experience. As we indicated in our Institution Decision, “the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In our analysis below, we consider all evidence as if viewed by a person having the minimum level of education and experience identified by Dr. Nelson, i.e., having “the equivalent of a Bachelor’s degree in electrical engineering, computer engineering, or related field and 3-5 years of professional experience in computer systems design, circuit design, or equivalent academic experience.” Ex. 1003 ¶ 6.” slip op. at 24

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “the parties, we find Petitioner has failed to authenticate Exhibit 1008, and that the dates printed on the faces of Exhibit 1008 and Exhibit A of the Rosenberg declaration are hearsay. Exhibit A of the Rosenberg declaration contains two archived versions, dated September 3, 2000 and October 23, 2000, of the webpage www.quicklogic.com/devices/QuickFC/Default.html. Ex. 1019, Ex. A. The “second page” of the archived webpage contains a link entitled “QuickFC Device DataSheet.” Id. However, as Patent Owner correctly argues, “the Rosenberg Affidavit only purports to ‘attest[] to the authenticity of the archived and dated QuickFC webpages’—not the purportedly linked to [QL80FC] exhibits” and “[t]he Rosenberg Affidavit neither references QL80FC nor makes any assertion of a connection between QL80FC and the webpages shown in the printouts.” PO Resp. 53–54. Petitioner offers no testimony from a custodian of records for the QL80FC product, as they did for the ORT8850 product, to support a finding that Exhibit 1008 is what Petitioner purports it to be. See Fed.R.Evid. 901(a). Moreover, we disagree with Petitioner’s contentions that FREs 703, 901(b)(4) or 902(7) authenticate or provide a basis to forego excluding Exhibit 1008. FRE 703 allows an expert to base his or her opinion on facts or data an expert in the field would reasonably rely on, even if they are not themselves admissible. Id. 703. They do not prohibit the exclusion of inadmissible evidence or allow for the admission of otherwise excludable evidence. Although FRE 901(b)(4) does allow evidence to be admitted based on its “appearance, contents, substance, internal patterns, or other distinctive characteristics,” Petitioner has not shown that Exhibit 1008 contains sufficient distinctive characteristics to authenticate it. The only characteristic of Exhibit 1008 that tends to show that it is a QuickLogic datasheet for the QL80FC product is the appearance of QuickLogic’s name and logo on the datasheet. See Ex, 1008. But Petitioner fails to present authenticated versions of other QuickLogic data sheets to demonstrate how the structure, format, and appearance of QL80FC is consistent with their structure, format, and appearance. See Pet. Reply 22–23; Opp. 14–15. Finally, FRE 902(7) does not authenticate Exhibit 1008, it only authenticates any “inscription[s], sign[s], tag[s], or label[s]” affixed to Exhibit 1008. See Fed.R.Evid. 902(7). Accordingly, for the reasons discussed above, we find Petitioner has failed to authenticate Exhibit 1008, and we exclude Exhibit 1008 from this proceeding.” slip op. at 22

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

    “1. Programmable Fabric / Programmable Fabric Circuitry Petitioner contends these terms “refer to user programmable circuitry capable of being programmed to implement arbitrary, as opposed to specific, logic functions.” Pet. 10. In our Institution Decision, we determined the precise meanings of these terms were not in dispute and, therefore, declined to expressly construe them. See Dec. Inst. 19–20 (citing Nidec Motor, 868 F.3d at 1017). Neither party disputes that finding, which we maintain here. See PO Resp. 8; Pet. Reply 3–30.” slip op. at 26

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

    “maintain our preliminary construction that the plain and ordinary meaning of the transceiver component limitation requires the LOS detector to be “a transceiver component having selectable values that is configured by the plurality of configuration memory cells.” The limitation requires “a plurality of transceivers containing respective components having selectable values,” wherein “said components [are] configured by . . . memory cells,” and wherein “one of said components is a loss of synchronization detector.” Ex. 1001, 6:32–36 (emphases added). Thus, the LOS detector is one of the transceiver components referred to earlier, i.e., one of “said components” “having selectable values” that is “configured by . . . memory cells.” Id. The Specification is consistent with this interpretation. It discloses a transceiver whose receiver side includes deserializer/comma detector 174, decoder 178, elastic buffer 182, CRC 186, and LOS 188.10 Id., Fig. 3. Each of these components is described as being configurable and having selectable values. Id. at 4:54–6:7. Moreover, our interpretation does not render superfluous the use of the term “configurable” in other limitations. To the contrary, the transceiver components limitation only requires transceiver components identified as “one of said components,” i.e., as one of the “respective components having selectable values” to be configurable. It does not require every transceiver component to be configurable because not every transceiver component has to be identified as “one of said components.” Thus, because the serializer and deserializer are not identified as “one of said components” in the “transceiver components” limitation, that limitation does not require that they be configurable. As a result, the claim’s later requirement of “a configurable serializer” and “a configurable deserializer” is not superfluous.” slip op. at 27

  Patent outcomesUS 7,187,709 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,187,709
• Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentable
  PTAB · Apr 5, 2022 · IPR2020-01597 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–5, 12, and 13 are unpatentable; claim 6 was not shown unpatentable because Young does not disclose claim 5’s flip-flop limitation.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2019). In our Institution Decision, we agreed with Patent Owner that the phrase “modules for implementing tasks, the module being reconfigurable” in independent claims 1 and 5 was not a “means-plus-function” limitation that must be construed under 35 U.S.C. § 112, paragraph 6. Inst. Dec. 15–18. We also construed the term “module” as “logic configured to perform a task that can receive and/or transmit communication signals.” Id. at 21. In doing so, we rejected Patent Owner’s argument that “‘reconfigurable modules” are not “logic that ‘may be programmed or reconfigured’ to implement tasks,” but rather “are circuits that have already been programmed to implement tasks and can then be updated.” Id. at 18–21 (quoting Prelim. Resp. 9). In its Patent Owner Response, Patent Owner included a footnote stating that it “maintains that this limitation should be construed to require that existing modules be updatable.” PO Resp. 12, n.1. Patent Owner, however, does not provide additional elaboration or set forth arguments explaining why the reasoning in our Institution Decision is in error. See id. (“For the remainder of this Petition, however, [Patent Owner] assumes that the Board’s broader construction is correct.”). Based on the complete record, we adhere to the interpretation set forth in our Institution Decision for the reasons discussed therein. See Inst. Dec. 18–21.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In its Preliminary Response, Patent Owner stated that it did not object to Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 7. In our Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art with the exception of the open-ended phrase “at least,” finding that this level of skill is consistent with the ’184 patent and the asserted prior art of record. Inst. Dec. 23. In its Response, Patent Owner states that it “does not object to the” level of skill in the art in the Institution Decision. PO Resp. 11–12 (citing Inst. Dec. 23); see also Ex. 2012 ¶ 57 (Dr. Brogioli’s testimony that he does “not object to the Board’s finding in the Institution Decision on the level of skill in the art.”). Based on the complete record, we adhere to the level of ordinary skill adopted in our Institution Decision. Inst. Dec. 23.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We do not agree with Patent Owner’s argument that Eggers is deficient because it “does not disclose the existence of reconfiguration data for the Shift Register and Output Connections modules or any means of generating such data.” PO Resp. 13. Claim 1 does not require “reconfiguration data” or a configuration memory, and thus Eggers need not expressly disclose such data or memory to anticipate. To the extent Patent Owner argues that configuration data is necessary for a reconfigurable module, the evidence indicates that one of ordinary skill would have understood that such data would be used in the modules of Eggers. In this regard, Dr. Nelson testifies that one of ordinary skill in the art “would understand that the AT6000 device is not sold ‘out-of-the-box’ with a shift register and output connections modules pre-configured” and that “Eggers necessarily had to reconfigure the AT6000 from its default state to implement these modules,” which would require reconfiguration data. Ex. 1033 ¶ 12. Indeed, Patent Owner acknowledges that the AT600 is necessarily loaded with configuration data to configure the shift register and output connections modules on startup. PO Sur-reply 3. We also do not agree with Patent Owner’s argument that the configuration data for the shift register and output connections modules is not “reconfiguration” data because “[t]he ’184 patent establishes that ‘reconfiguration’ refers to reprogramming after startup, not programming on startup.” PO Sur-reply 3. As noted above, claim 1 does not require “reconfiguration data;” it only requires “modules” that are “reconfigurable.” Ex. 1001, 10:20–21. We therefore need not enter into a debate about the precise definition of “reconfiguration data” because the evidence shows that Eggers discloses modules that are reconfigurable, as claim 1 requires. As discussed above, one of ordinary skill would have understood that Eggers’s shift register and output connections modules are “reconfigurable” because they are created with reconfigurable logic in the Atmel AT6000. Ex. 1002 ¶¶ 92–93. Consequently, Petitioner has shown by a preponderance of the evidence that Eggers discloses limitation 1[a].” slip op. at 21

  Patent outcomesUS 7,224,184 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,224,184
• Analog Devices, Inc. v. Xilinx, Inc. And Xilinx Asia Pacific Pte. Ltd.Some claims unpatentable
  PTAB · Apr 1, 2022 · IPR2020-01531 · APJ John F Horvath · IPR · Final written decision

  Claims 1–3, 7–9, 13–17, and 19 are unpatentable as anticipated by Xia; claims 12 and 18 were not shown unpatentable over Xia or Iwata.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “the time of the invention as someone who would have had “the equivalent of a Bachelor’s degree in electrical engineering and four or more years of experience in analog circuit design.” Pet. 6 (citing Ex. 1003 ¶ 23). In our Institution Decision, we identified a person having ordinary skill in the art at the time of the invention as someone with “a Bachelor’s degree in electrical engineering, or its equivalent, and four years of experience in analog 1 Petitioner also relies upon the Declarations of Un-Ku Moon, Ph.D. (Exs. 1003, 1031) and Sylvia Hall-Ellis, Ph.D. (Ex. 1022). Patent Owner relies on the Declaration of Dr. Marwan Hassoun (Ex. 2008). we maintain here. See PO Resp. 8; Pet. Reply 2–28.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Owner, we maintain our preliminary construction of the connection limitation. Claims 1 and 8 require a programmable interconnect circuit coupled between an I/O port and a plurality of ADCs that enables a connection of the ADCs to the I/O port. Ex. 1001, 14:21–26, 14:51–53, 14:57–62. Figure 9 of the ’071 patent illustrates such “a programmable interconnect circuit.” Id. at 9:20–21, Fig. 9. It can be “implemented as an ADC interface, or more particularly, the routing network 704 or 804.” Id. at 9:22–24. In Figure 10, routing network 804 “enables the coupling of the analog input signal at input/output port 604 to each of 8 ADC circuits 602.” Id. at 10:3–8, Fig. 10. In Figure 11, routing network 804 together with sampler 1102 “enable[s] t[he] routing of a sample of the analog input signal periodically change the routing of the sampled signal to a different ADC.” Id.at 10:60–11:2, Fig. 11. Thus, the programmable interconnect circuit or routing network 804 enables both direct and continuous connections between the I/O port and ADC circuits as shown in Figure 10, and indirect and periodic connections as shown in Figure 11. Accordingly, for the reasons discussed above, we find the connection limitation has its plain and ordinary meaning, which includes enabling both a direct and continuous connection of the I/O port to the plurality of ADCs and an indirect and periodic connection.” slip op. at 8

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

    “We agree with Patent Owner. First, as discussed above, claims 12 and 18 are directed to the embodiment of Figure 10 of the ’071 patent, while claims 13 and 19 are directed to the embodiment of Figure 11. The Specification makes this clear by using language similar to that in claims 12 and 18 to describe the Figure 10 embodiment, and using language similar to that in claims 13 and 19 to describe the Figure 11 embodiment. For example, the Specification contrasts “coupling the analog input signal to each analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 18) with the “alternative[]” embodiment of “periodically coupling a sample of the analog input signal to an analog-to-digital converter circuit of the plurality of analog-to-digital converter circuits” (the same language used in claim 19). Ex. 1001, 2:50–59. Similarly, the Specification contrasts “rout[ing] the analog input signal to each of the ADC circuits 602 of a group of ADC circuits” (similar to the language of claim 12) as shown in Figure 10 with input signal to a selected ADC circuit 606” (similar to the language of claim 13) as shown in Figure 11. Id. at 10:56–66. Based on these disclosures, we find that one of ordinary skill in the art would have understood the language of claims 12 and 18 to require routing the analog input signal received at the input/output port to each analog-to-digital converter without the use of a sampler, as shown in the Figure 10 embodiment. The use of a sampler is covered by claims 13 and 19, which cover the alternative Figure 11 embodiment.” slip op. at 26

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

    “E. Obviousness over Iwata and Hsueh Petitioner argues claim 2, which depends from claim 1, would have been obvious over the combination of Iwata and Hsueh. See Pet. 100–102. Patent Owner disagrees. See PO Resp. 53. As discussed in § II.C.4, supra, Petitioner has demonstrated by a preponderance of evidence that claim 2 is anticipated by Xia. Therefore, we need not consider whether Petitioner has also demonstrated that claim 2 would have been obvious over the combination of Iwata and Hsueh. See Beloit, 742 F.2d at 1423.” slip op. at 36

  Patent outcomesUS 8,548,071 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,548,071
• Netapp, Inc. v. Kom Software, Inc.Some claims unpatentable
  PTAB · Jul 28, 2020 · IPR2019-00603 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–7, 45, 49–51, 55–57, and 59 are unpatentable as obvious over Blickenstaff and Crouse; claims 46–48 and 52–54 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Although the parties articulate different levels of skill for a POSA, neither party explains how its recited level of skill impacts the obviousness analysis such that application of one proposal versus the other would lead to different ultimate outcomes. Based on the record before us, including the types of problems and solutions described in the ’234 patent and the cited prior art, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in a technical field such as computer engineering, computer science, electrical engineering, electronics engineering, applied mathematics, or their equivalent, with two years of experience in the field of computing systems development, including fields of data storage management or file storage and manipulation; a master’s degree in such a technical field; or comparable computing systems work experience. We further note that our analysis would be the same under either parties’ definition.” slip op. at 9

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

    “Thus, the actual dispute centers around whether or not transparent access requires a user to know or believe that the file is located in a particular location. For the reasons discussed below, we determine that though transparent access allows for the user to falsely believe the file is located in a particular location, it does not require such belief.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for patent owner

    “that the last storage medium associated with the archived files must be part of the virtual storage. See Reply 21–22. Rather, Petitioner responds by changing its position that retirement layer 315 is the last storage layer within the virtual storage to stating that shelf layer 314 is the last storage layer within the virtual storage and that shelf layer 314 is associated with archived files. Compare Pet. 36 with Reply 21–22 (citing Ex. 1005, 6:61–7:3, 8:2–4; Pet. 35–37, 50, 57). Petitioner cites the Petition and Dr. Long’s Declaration for support that “Blickenstaff discloses successive migration through the layers of its hierarchy based on activity, including to layer 314.” Reply 21 (citing Pet. 50, 57; Long Decl. ¶ 76). Neither the Petition nor Dr. Long’s declaration, however, discusses shelf layer 314, let alone asserts that shelf 12 Petitioner’s contentions for claims 46 and 52 refer to the contentions for claim 3, which, according to Petitioner, “addresses identical language,” and provide no additional explanation. Pet. 50, 57. layer 314 is associated with archived files. See Pet. 50, 57; Long Decl. ¶ 76. In fact, a word search of the Petition and Dr. Long’s Declaration reveal that shelf layer 314 is not discussed in either document, though it is shown in Blickenstaff’s Figure 3, which is reproduced in the documents. The Petition does include some general statements about moving files between layers, but when discussing Blickenstaff’s embodiment in Figure 3 there is no mention of shelf layer 314, even though layers 311, 312, 313, and 315 are explicitly mentioned. See Pet. 35–36; Long Decl. ¶¶ 74–75. We determine that Petitioner’s argument that shelf layer 314 is the claimed last storage medium that is associated with archived files is an improper argument because a “Petitioner may not submit new . . . argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019, 73. In its Reply, Petitioner also belatedly attempts to explain how Blickenstaff’s retirement layer, although not considered to be part of Blickenstaff’s virtual storage, is nonetheless part of “virtual storage” as that term is used in the ’234 patent. Reply 22. This argument also is not grounded in Petitioner’s original assertions and is improper in a reply.” slip op. at 39

  Patent outcomesUS 7,392,234 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,392,234
• Fitbit, Inc. / Wahoo Fitness LLC. v. Blackbird Tech, LLC D/B/A Blackbird Technologies, LLCSome claims unpatentable
  PTAB · Mar 12, 2019 · IPR2018-00275 · APJ Debra K Stephens · IPR · Final written decision

  Claims 2 and 5 were not shown unpatentable over Amano; claim 6 was shown unpatentable as obvious over Kato and Amano.

  RulingsFinal written decision

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

    “Under district court-type claim construction, claim terms are given 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 of 8 record (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc); see also In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted)). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence” (DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17)). There is a “heavy presumption,” however, “that a claim term carries its ordinary and customary meaning” (CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted)). We determine that no claim terms require express construction (see Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (Only terms which are in controversy need to be construed, and only to the extent necessary to resolve the controversy)).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art at the time of the invention would have been [1] a person with a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or [2] a person with a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis or “[a] person with less education but more relevant practical experience. . . .” (Pet. 26–27 (citing Ex. 1005 ¶ 45–47)). Patent Owner does not dispute the educational level or experiential aspects of Petitioner’s definition in its Response (see generally PO Resp.). We note that the 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 at 1355). Based on our review of 12 the ’212 Patent, the types of problems and solutions described in the ’212 Patent and cited prior art, and the testimony of Dr. Choudhury and Dr. Michael Caloyannides, we adopt and apply Petitioner’s description of a skilled artisan as possessing (1) a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in motion tracking, motion analysis, inertial sensing, or signal analysis, or (2) a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in motion tracking, motion analysis, inertial sensing, or signal analysis, is supported by the current record.” slip op. at 12

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

    “Petitioner does not identify any disclosure in Amano that describes calculating pitch based on any distance. That pitch has a length/time measurement does not change the lack of disclosure of Amano of any counting of steps in determining the distance traveled. Indeed, Amano’s FFT processing merely determines when a step has occurred through identification of peak frequency of the second order harmonic wave component, to determine pitch; however, the FFT processing does not count steps to be used in further calculation.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation foundNot shown unpatentable

    “We agree with Patent Owner that Amano does not disclose calculation of distance travelled, as recited in claims 2 and 5, as set forth above. Further, Petitioner has not persuaded us an ordinarily skilled artisan would have found it obvious to modify the FFT processing which identifies a peak frequency of a second harmonic to measure the pitch, to calculate a distance travelled as recited in claims 2 and 5 instead. Petitioner provides no additional discussion of this limitation in its Petition, instead relying on its anticipation arguments (Pet. 50–51). Thus, Petitioner has not articulated any reason why an ordinarily skilled artisan would have understood Amano to teach calculating a distance travelled.” slip op. at 25

  Patent outcomesUS 6,434,212 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,434,212

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.