• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

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

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand

  Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6

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

    “We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12

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

    “The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22

  Patent outcomesUS 11,004,271 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 22, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–13 and 17–20 are unpatentable over the stated obviousness grounds; claims 14–16 are not shown unpatentable because the cited art does not teach logic configured to determine concurrent failure probability.

  RulingsFinal written decision

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

    “We decline to adopt Patent Owner’s implicit construction that would require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11

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

    “As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14

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

    “Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38

  Patent outcomesUS 8,830,821 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,830,821
• Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 22, 2024 · IPR2023-00402 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–13 and 17–20 are unpatentable over the Doshi and Guichard grounds; claims 14–16 were not shown unpatentable over Doshi, Guichard, and Xu.

  RulingsFinal written decision

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

    “require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11

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

    “As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14

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

    “Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38

  Patent outcomesUS 8,830,821 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,830,821
• Cisco Systems, Inc. v. Orckit CorporationSome claims unpatentable
  PTAB · Oct 8, 2024 · IPR2023-00714 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–5, 7–16, 18–22, and 24–26 are unpatentable as obvious over Vink and Patrick, with or without AAPA; claims 6, 17, and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSA” or “POSITA”) would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, or approximately two years of experience working in the field of information technology and networking . . . . Lack of professional experience can be substituted by additional education, and vice versa. Pet. 12 (citing Ex. 1003 ¶¶ 59–60). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill.” PO Resp. 19. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions addressed in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “Patent Owner argues “that ‘subscriber lines’ should be construed as ‘communication lines to users of subscription-based network services.’” Id. Petitioner does not dispute this construction directly, but rather argues that no construction is necessary. Reply 6. We determine that no terms need to be construed. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7

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

    “Here however, we have found that it was known to connect LANs to external networks. See Ex. 1014, 6:23–28, Fig. 1; Ex. 1015, 1:6–9; Ex. 1016, 1:22–25; Ex. 1017, 1:7–11. We further agree with Petitioner’s uncontested point that “[t]echniques to further allow the communication system to access external networks by connecting the master to an external network were well-known in the art, as evidenced by Patrick and/or AAPA.” Pet. 24 (citing Ex. 1003 ¶¶ 74–88). The Petition focusses on combining the “communication systems” of Vink, Patrick and/or AAPA, as opposed to relying on a particular type of LAN. Thus, in contrast to Forest Lab’ys, we determine that the general or “generic” benefit of providing “access to a wider array of information,” where it was already known to provide external network access (e.g., the internet) to LANs,5 does provide a motivation to combine Vink and Patrick, with or without AAPA. See Intel Corp. v. Pact XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” (quoting KSR, 550 U.S. at 417)).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner also argues that Vink “teaches against” hierarchical addressing because “doing so would eliminate the purported advantages associated with using a non-hierarchical system.” PO Resp. 36 (citing Ex. 2005 ¶ 69 (Patent Owner’s declarant making the same statement)). Patent Owner does not further discuss the reasoning behind this statement, identify the “purported advantages,” or even identify the relevant disclosure relied on in Vink. We decline to speculate as to Patent Owner’s position in this regard. We further note that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).” slip op. at 19

  Patent outcomesUS 6,680,904 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,680,904
• Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11

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

    “Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26

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

    “allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Arista Networks, Inc. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00515 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103; claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “For reasons explained in the Petition and Petitioner’s Reply, we agree with Petitioner that the Baker–Wright–Holender ’699 combination teaches summing the two bandwidths determined in “allocating” steps 12.5 and 12.7 to determine a total allocation for each of the physical links—motivated by the known need to ensure that bandwidths do not exceed the available physical link capacity. We disagree with Patent Owner that Holender ’699’s discussion of summing is merely describing a physical constraint. Holender ’699 teaches normalizing the logical link capacities, which requires summing the logical link capacities. See Ex. 1007, 8:38–51. We credit Dr. Houh’s testimony that this “confirms that [Holender ’699’s] teachings about summing are not simply ‘explaining a physical constraint,’ but actually performed.” Ex. 1036 ¶ 61. Holender ’699 refers to capacities 𝐶𝐶𝑗𝑗 as “logical link capacities for each logical link j over all logical networks. Ex. 1007, 6:52–55. But when mapped to physical links, Holender ’699 denotes capacities 𝐶𝐶𝑘𝑘𝑘𝑘 as “capacities of the logical links [𝑙𝑙] that need capacity on the k:th physical link.” Ex. 1007, 8:38–43. In other words, they are the capacities, or bandwidths, allocated to each physical link 𝑘𝑘 for implementing associated logical link 𝑙𝑙. See also id. at 6:60–67 (describing a matrix designed to indicate “if logical link j needs capacity on the k:th physical link.”).” slip op. at 50

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 3 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “necessary because the construction does not resolve any contested issues. Pet. Reply 8–10 (citing Ex. 1005 ¶¶ 16, 62; Ex. 1006 ¶¶ 5, 24; Ex. 1003 ¶ 96; Ex. 1036 ¶¶ 49–50). But if a construction is necessary, Petitioner argues that the we should construe in response to as “using,” consistent with how the claimed invention is described in the ’431 patent. Id. at 10–11 (citing Ex. 1001, 2:52–6:10, 8:52–9:2; Ex. 1036 ¶¶ 7–11). Petitioner disagrees that the term means “based on” because limitation 1.3 uses the phrase based on, suggesting that the applicant made a conscious decision to use different language in limitation 1.5. Id. at 11 (citing Ex. 1036 ¶ 11). Patent Owner responds that its two proposed constructions are synonymous, and argues that Petitioner agrees that in response to encompasses “using” or “using information from.” PO Sur-reply 8 (citing Ex. 1001, 2:22–26). Patent Owner contends that its proposed construction resolves a controversy because in Patent Owner’s view, the Baker–Wright combination does not use information from the recited mapping to allocate bandwidth. Id. at 9–12 (citing Ex. 1006 ¶¶ 5, 17, 24; Ex. 2009, 52–56; Ex. 2008 ¶¶ 62–76). Similarly, Patent Owner contends that Holender ’699 does not teach mapping. Id. at 12–13 (citing Ex. 1007, 3:15–17; Ex. 2008 ¶¶ 89–92). We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 10

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

    “We find Petitioner’s arguments persuasive that Baker teaches allocating bandwidth as part of its resources and that, in light of Wright and Holender ’699, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. Holender ’669 provides further supporting disclosure. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 33; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 9–12 (citing Ex. 1003 ¶¶ 42–46, 48; Ex. 1021 ¶¶ 100–101). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 11–12 (citing Ex. 1003 ¶ 47; Ex. 1021 ¶¶ 102–104).” slip op. at 34

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill in the Art” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21

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

    “Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31

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

    “reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53

  Patent outcomesUS 10,945,807 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,807
• Apple Inc. v. Mozido, Inc.Some claims unpatentable
  PTAB · Jan 2, 2024 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6–11, 13–18, 20, and 21 are unpatentable as obvious over Easterly and Luz; claims 5, 12, and 19 were not shown unpatentable.

  RulingsFinal written decision

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

    “Petitioner asserts that “no claim term requires express construction.” Pet. 12. During trial, Patent Owner did not provide any explicit claim constructions. See PO Resp. 14. Patent Owner, however, asserts “the preamble is limiting because it provides necessary antecedent basis for ‘the computer system’ which is recited later in the claim.” Id. As demonstrated in our analysis below, we need not construe any claim terms or phrases to resolve the controversy before us. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Specifically, we need not determine whether the “computer system” recited in the preamble should be treated as limiting, because, even if it were, Petitioner demonstrates how Easterly satisfies this claim feature. See infra Section II.D.3a.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. PO Resp. 1 (citing Ex. 2001 ¶ 37). We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for petitioner

    “6 In the Sur-reply, Patent Owner presents the following new arguments for the first time: (1) “[t]he Petition fails to explain why a merchant system that already knows its own merchant preferences would need to encode this information into a barcode so that the same merchant system can apply a set of rules with those preferences to identify the newly selected network;” (2) the Petition “fails to meet the claim language, which requires that the selected debit network be identified in the scannable code, rather than something that the merchant system figures out on its own by applying rules to other debit networks identified in the scannable code;” and (3) “[t]he Petition has failed to meet its burden to demonstrate by a preponderance of the evidence that the relied on references fairly suggest including the selected debit network in combination with the customer preferred debit network and merchant preferred debit network in the claimed scannable code, as required by the Challenged Claims.” PO Sur-reply 14–16 (quoting Pet. 41–42). Patent Owner does not identify arguments in the Reply to which these Sur-reply arguments are responsive. See id. Patent Owner’s belated new arguments exceed the proper scope of a sur-reply and are not considered in rendering this Final Written Decision. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply . . . .”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG,” available at https://www.uspto.gov/ TrialPracticeGuideConsolidated) 73–74 (“Sur-replies should only respond to arguments made in reply briefs . . . .”), 74 (“a reply or sur-reply that raises a new issue . . . may not be considered.”)” slip op. at 25

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

    “combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner asserts that the combination is explicitly suggested by Easterly because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction,’” and is “‘able to incorporate information sufficient to identify the parties to a transaction and all other relevant information regarding the transaction.’” Id. (quoting Ex. 1005 ¶¶ 18, 20) (emphasis omitted); see Pet. 22 (similar argument, quoting Ex. 1005 ¶ 18). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Pet. 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Pet. 22 (citing Ex. 1003 ¶ 52). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. . . . Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction. Pet. 22–23 (citing Ex. 1003 ¶ 54). Based on the entire record, including Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded by a preponderance of the evidence that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25, 34–35; KSR, 550 U.S. at 418.” slip op. at 15

  Patent outcomesUS 9,189,785 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,189,785
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-01004 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1, 5–9, and 12–14 are unpatentable; claims 2–4 and 15–20 were not shown unpatentable, based on the asserted prior-art challenges.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art” slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–9 and 12–20 of the ’943 patent. Smart Mobile Technologies LLC (“Patent Owner”) filed a Preliminary Response (Paper 6). After receiving authorization, Petitioner filed a Reply to the Preliminary Response (Paper 7), and Patent Owner filed a Sur-reply (Paper 8). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–9 and 12–20 of the ’943 patent on all presented challenges. Paper 13 (“Inst. Dec.”), 2, 71.” slip op. at 2

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

    “2. Claim 1 The parties dispute whether Petitioner has shown a motivation to” slip op. at 72

  Patent outcomesUS 9,614,943 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,614,943

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.