• Abbott Laboratories v. Miracor Medical SANo claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00116 · APJ John D Hamann · IPR · Final written decision

  The Board held claims 1–5, 7, 10, 16–24, 26, and 28 not unpatentable under any of the four § 103 grounds because the petition failed to prove required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that the ’077 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’077 patent is consistent with the definition of one of ordinary skill in the art proposed by Petitioner, which we adopt. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We further find that our determinations in this Decision would be the same if we were to instead adopt the level of skill proposed by Patent Owner.” slip op. at 11

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

    “We agree with Patent Owner that “axially adjacent” should be given its plain and ordinary meaning of “adjacent to one another as measured along a central axis.” PO Resp. 5–6; see also Ex. 2015 ¶¶ 73–79 (Mr. Leschinsky addressing the claim term “axially adjacent” and explaining that a person of ordinary skill would have understood it to mean that the “first magnetic device and the rotor are ‘adjacent’ to one another, i.e., disposed next to one another, as measured along the central axis about which the rotor spins”). Patent Owner’s construction also is supported by Petitioner’s expert, Mr. Crosby, who agrees that “adjacent to one another as measured along a central axis,” could be “one meaning,” along with “many other meanings.” Ex. 2014,8 19:13–20:11. In sum, consistent with our Institution Decision, we conclude that the plain and ordinary meaning of “axially adjacent” is “at a position adjacent to one another as measured along a central axis.” See Dec. on Inst. 12.” slip op. at 14

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

    “Second, for the reasons below, we determine that we do not need to construe any other claim terms to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe” slip op. at 14

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

    “We agree with Patent Owner. As we discuss above, we find “axially adjacent” to mean “adjacent to one another as measured along a central arguments that rest on Petitioner’s assertion that in the Parallel Litigation, Patent Owner “asserts that a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Id. at 20–21, n.6 (citing Ex. 1019, 5–7). In particular, we find unavailing Petitioner’s argument that Wampler teaches that magnetic pieces 88 (“a first magnetic device”) “are inserted [‘axially adjacent’] in…the impeller.” Id. at 20–21 (citing Ex. 1008 ¶ 80, Fig. 13; Ex. 1003 ¶ 174). We also find unavailing Petitioner’s reliance on Wampler’s Figure 13 and Mr. Crosby’s cited testimony that “the ‘impeller’ and ‘magnetic pieces’ are axially adjacent—situated next to each other on the same axis.” Id. at 21–22 (annotating Ex. 1008, Fig. 13; citing Ex. 1003 ¶¶ 174–176). Petitioner does not sufficiently explain this argument, but appears to conflate being adjacent along a central axis with about an axis. Id. We also find unavailing Petitioner’s argument that under Patent Owner’s construction, Wampler also teaches this limitation, because Patent Owner “concedes that ‘axially adjacent’ components ‘have positioning that is next to one another, perhaps touching or sharing a common side, when measured along the axis.’” Pet. Reply 14–15 (citing PO Resp. 14). Petitioner mischaracterizes Patent Owner’s arguments and ignores Patent Owner’s showing that “axially adjacent” components are “distinct from components that are aligned with one another such that they overlap or occupy the same portion of an axis upon which they are positioned.” PO Resp. 14 (citing Ex. 2015 ¶ 78). For the preceding reasons, Petitioner fails to show by a” slip op. at 24

  Patent outcomesUS 11,754,077 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,754,077
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …

  RulingsFinal written decision

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

    “image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11

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

    “We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27

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

    “Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31

  Patent outcomesUS 7,314,167 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,314,167
• Cisco Systems, Inc. v. Umbra Technologies Ltd.No claims unpatentable
  PTAB · Aug 28, 2025 · IPR2024-00270 · APJ Gregg I Anderson · IPR · Final written decision

  Claims 15–20 were not shown unpatentable because Hankins did not teach limitation 15.3; claims 1–14 were disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposal of the level of ordinary skill in the art. PO Resp. 6. Petitioner’s proposal is supported by the Reddy Declaration and is consistent with the ’595 patent and the asserted prior art. Accordingly, we apply Petitioner’s articulation in our obviousness evaluation below.” slip op. at 14

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

    “B. Claim Construction Beyond plain and ordinary meaning, Petitioner does not propose any term for claim construction. Pet. 13. Patent Owner does not argue any claim construction issue. See generally PO Resp. The argument and evidence provided by the parties regarding limitation 15.3 is dispositive. See Section II.E. below. Our analysis of limitation 15.3 does not turn on any claim construction question. Id. Accordingly, we do not need to construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). We apply the plain and ordinary meaning of all claim terms, as would have been understood by a person of ordinary skill in the art, in the context of the ’595 patent.” slip op. at 14

  • Adverse judgmentAdverse judgmentOther

    “D. Claims 1–14 as Obvious Over Kommula As already noted, Patent Owner has disclaimed claims 1–14. Ex. 3001. We do not analyze claims 1–14 as the challenge is mooted by the filing of the Statutory Disclaimer.” slip op. at 15

  • BurdenNot shown unpatentable

    “350 receiving a request for a listing of “services” from a gateway device and provisioning one or more tunnel servers has not been shown to teach generating “a list of available servers.” There is no persuasive evidence to support Petitioner’s assertion. Petitioner relies on unsupported argument because, at best, Hankins discloses gateway devices 311 and 321, each of which is located in different logical broadcast domains, requesting services from one another. Ex. 1005, 12:9–16. This particular disclosure, however, does not appear to implicate the functionality of Hankins’s controller 350, much less result in controller 350 generating a list of available tunnel servers that would allow gateway devices 311 and 312 to exchange a listing of “services” therebetween. Petitioner’s reliance on Hankins’s controller 350 provisioning additional tunnel servers both to improve performance and without human intervention fares no better. Ex. 1005, 25:45–55. There is no indication in Hankins that this provisioning performed by controller 350 is done in response to receiving a request for a list of available tunnel servers from either gateway device 311 or 312.” slip op. at 20

  Patent outcomesUS 11,108,595 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,108,595
• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

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

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135
• Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10

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

    “43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39

  Patent outcomesUS 10,713,366 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,366
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00398 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–22 were not shown unpatentable as obvious over Dill, Vadhri, and Akashika because Dill was not shown to disclose the claimed Integration Tier Limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s undisputed formulation of ordinary skill in the art as set forth above, because we are satisfied this formulation generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. We do not adopt Patent Owner’s annotation to Petitioner’s formulation as requiring knowledge of “mobile wallets” specifically, because we determine knowledge of “mobile payment systems and techniques” per Petitioner’s formulation is tied sufficiently to the claims of the ’196 patent to reflect the level of ordinary skill in the pertinent art. At the same time, even if we were to include knowledge of “mobile wallets” in our formulation, it would not materially change our Decision as set forth below. That is, we would still determine Petitioner has not shown by a preponderance of the evidence that Dill discloses the Integration Tier Limitation.” slip op. at 10

  • Expert testimonyNot reached

    “We need not resolve the parties’ dispute as to whether Dr. Houh qualifies as an ordinarily skilled artisan. Even assuming that Dr. Houh possesses, at a minimum, ordinary skill in the art—as we have done in this Decision—we determine Petitioner still fails to show that any of the challenged claims are unpatentable.” slip op. at 12

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

    “The Integration Tier Limitation requires no further construction for purposes of this proceeding. See Pet. Reply 7 (“[N]o specific construction is required.”). The claim clearly specifies that the claimed “web services communication mechanisms” must serve as an interface between the integration tier and (1) the claimed mobile wallet application and, separately, (2) “a plurality of different device types over a plurality of different communication channels.” For purposes of this Decision, we assume that this interface may be direct or indirect. See id. at 6 (asserting that “communication channels that interface, even indirectly, with the ‘web services communication mechanisms’ still interface with the ‘web services communication mechanisms’”).” slip op. at 28

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

    “However, we find that of those four channels (1)–(4), only the first channel (1) is associated with web interface 137 such that it qualifies as a “communication channel,” as required by claim 1. There is no indication in the Dill disclosures cited by Petitioner that any of the other three channels (2)–(4) are associated with web interface 137. For example, Figure 9 of Dill includes a double-headed arrow to illustrate communication between web interface 137 and transfer options module 145, but Figure 9 does not include any arrows to illustrate communication between web interface 137 and any one or more of IVR interface 136, other interfaces 138, agent system 135, or mobile network 115. See Ex. 1005, Fig. 9. In other words, Petitioner fails to show Dill teaches web interface 137 interfaces with any devices over any of channels (2)–(4), as would be required by Petitioner’s mapping. In the Petition, Petitioner never clearly (or persuasively) addresses this requirement of the claim. Petitioner does contend that transfer options module 145 is coupled to various devices via interfaces 136–138 and exchanges transaction information (see Pet. 25–26; see also Pet. Reply 10– 11), but that contention misses the mark. The salient question is whether Dill’s web interface 137 (i.e., the claimed “web services communication mechanisms”) interfaces with the different device types over the channels, not whether transfer options module 145 (i.e., the claimed “integration tier”) does so.” slip op. at 30

  Patent outcomesUS 10,438,196 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,438,196
• Apple Inc. v. Fintiv, Inc.No claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1–22 were not shown unpatentable under § 103 over Dill, Vadhri, and Akashika because Dill did not teach or render obvious the hardware SIM card and integration tier limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we determined that a person of ordinary skill in the art 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 with a basic knowledge of accounting” and “working knowledge of mobile payment systems and techniques,” as Petitioner proposes. Inst. Dec. 9 (quoting Pet. 3–4). We stated that “this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’488 patent and the asserted prior art.” Id. (citing Ex. 1003 ¶ 22; Ex. 2001 ¶ 35).” slip op. at 10

  • Expert testimonyPetitioner expert discountedMixed

    “In addition, Petitioner’s reliance on Dr. Houh’s testimony (see Pet. 23–24) is unavailing. Although Dr. Houh agrees with the arguments in the Petition and includes quotes from the cited portions of Dill and Bykov (see Ex. 1002 ¶¶ 95–97), he provides no additional analysis or explanation beyond what was provided in the Petition. As a result, his testimony suffers the same deficiencies as the Petition. Also, we do not credit his conclusion that Dill includes the requisite disclosure (see id. ¶ 97) because he fails to provide sufficient supporting explanation or evidence (see 37 C.F.R. § 42.65(a)). Finally, we note that Petitioner misrepresents Dr. Shamos’s testimony by stating that Dr. Shamos “agrees that if a mobile device executes a mobile wallet over a cellular network, the mobile device has a SIM card for the mobile wallet.” Pet. Reply 22 (emphasis added) (citing Ex. 1022, 29:4–7, 40:9–10). In the cited testimony, Dr. Shamos agrees that mobile devices have SIM cards, but he does not address where a mobile wallet application would be installed. Ex. 1022, 29:4–7, 40:9–10. Thus, contrary to Petitioner’s argument, we determine that Dr. Shamos’s testimony does not support Petitioner’s position.” slip op. at 27

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

    “for the term “hardware SIM card” because the important points are undisputed. In particular, the parties agree that a “hardware SIM card” is a SIM card implemented in hardware rather than software. See Pet. Reply 9 (citing Ex. 1021 ¶ 36); Tr. 40:25–41:2 (Patent Owner’s counsel explaining that the language in its proposed construction was “to differentiate it from a software SIM card”); see also PO Resp. 16, 19 (asserting that the term refers to a specific type of hardware, namely a “chip” or a “smart card”) (citing Ex. 2003 ¶¶ 32–33). The parties also agree that an ordinarily skilled artisan would have known that a “SIM card” is a component in a mobile device involved in identifying and authenticating a user to a mobile network. See Tr. 30:23–31:3 (Petitioner’s counsel stating “a SIM card, just as known in the art . . . would allow the user to be able to access the mobile network” 10 Each page in Exhibit 2021 includes at least two page numbers. For clarity, we refer to the page number of the exhibit (shown in the bottom right corner), and we have adjusted Patent Owner’s citation accordingly. given “the user’s identification information on it”), 39:24–40:2 (Patent Owner’s counsel stating that “I think everyone is in agreement that the critical aspect of what makes a SIM card a SIM card is that it can authenticate a mobile device to a wireless network”). The evidence supports the parties’ understanding. The word “SIM” is an acronym for “subscriber identity module” (see, e.g., Ex. 1001, 6:58–67; Ex. 2021, 5), and the record shows that a SIM is a specific component in a mobile device that is involved in identifying and authenticating a user to a mobile network (see Ex. 2003 ¶¶ 30–31; see also e.g., Ex. 2021, 7 (stating that a SIM’s “primary function” is “to authenticate the subscriber to the network”); Ex. 2025, 3 (describing the SIM)).11 Consequently, we determine that an ordinarily skilled artisan would have understood a “hardware SIM card” to be a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. We do not need to further construe the term, or determine whether the additional requirements proposed by Patent Owner are appropriate, because Petitioner fails to show that the prior art teaches or suggests the claimed “hardware SIM card,” as explained below. See infra § II.D.2.a (analyzing the parties’ substantive contentions).” slip op. at 13

  • BurdenNot shown unpatentable

    “Petitioner has not shown, by a preponderance of the evidence, that Dill discloses “a mobile wallet application installed on a hardware SIM card,” as required by element 1.3B. See Pet. 23–24. In particular, even assuming that Dill teaches installing a mobile wallet application somewhere on a mobile device (see Pet. 23),14 Dill does not teach installing it on a hardware SIM card,15 as specifically required by the claim. Petitioner relies upon paragraph 106 of Dill (see Pet. 23), but that paragraph does not disclose this claim limitation (see Ex. 1005 ¶ 106). In relevant part, that paragraph of Dill simply states: 14 Patent Owner disagrees with this premise, arguing that Dill does not disclose a mobile device that includes a mobile wallet application. See PO Resp. 52–56. We need not resolve that dispute because, even assuming Petitioner’s premise (as we have done in this Decision), Petitioner still fails to show that the claims are unpatentable. 15 As noted above, a “hardware SIM card” is a hardware component in a mobile device that is involved in identifying and authenticating a user to a mobile network. See supra § II.C.1 (addressing meaning of term). It should also be appreciated that the methods described above may be performed by hardware components or may be embodied in sequences of machine-executable instructions, which may be used to cause a machine such as a general-purpose or special-purpose processor or logic circuits programmed with the instructions to perform the methods. These machine-executable instructions may be stored on one or more machine readable mediums, such as CD-ROMs or other type of optical disks, floppy diskettes, ROMs, RAMs, EPROMs, EEPROMs, magnetic or optical cards, flash memory, or other types of machine-readable mediums suitable for storing electronic instructions. Alternatively, the methods may be performed by a combination of hardware and software. Ex. 1005 ¶ 106 (emphases added). This teaches storing instructions on “other types of machine-readable mediums,” but it fails to teach storing instructions on a hardware SIM card, much less storing Dill’s mobile wallet application there. In short, Dill is silent with respect to this issue, and silence is not disclosure. Notably, Petitioner does not contend (or show) that a mobile wallet application installed on a mobile device would necessarily be installed on a hardware SIM card. See Pet. 23–24; Ex. 1003 ¶¶ 95–97. Indeed, the record indicates that a mobile wallet application installed on a mobile device could instead be installed on a different component. See, e.g., Ex. 1001, 7:1–3, 9:33–35 (identifying device memory as alternate component); Ex. 2021, 5 (describing SIM as the “smaller of two computer chips inside a GSM mobile handset”); cf. Pet. Reply 9 (distinguishing between hardware SIM cards and software ones). Thus, Petitioner fails to show that this claim limitation is inherent in Dill. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (explaining that inherency requires a showing that “the limitation at issue necessarily must be present”).” slip op. at 22

  Patent outcomesUS 9,208,488 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,208,488
• Medivis, Inc. v. Novarad Corp.No claims unpatentable
  PTAB · Mar 6, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–6 and 11–20 were not shown unpatentable: Doo did not disclose the claimed volume, the Doo-Amira combination lacked a persuasive rationale, and the other references were not shown publicly accessible.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided 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: a bachelor’s degree in computer science, electrical 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 7

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

    “The parties propose constructions for the claim terms “three- dimensional (3D) data,” “inner layer(s) of the patient,” “confined within a virtual 3D shape,” and “being having.” Pet. 11–14; PO Resp. 11–18. We do not need to construe any of these claim terms in order to resolve the issues presented in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 8

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

    “First, neither the Petition nor Dr. Kazanzides explains how Doo’s curved plane teaches the claimed “volume.” See Pet. 36–37; Ex. 1012 ¶¶ 74–75 (essentially repeating the Petition). The Petition merely asserts that Doo’s image in Figure 7 “is confined within the volume of the virtual 3D shape illustrated in Figure 9,” without explaining how the shape of Figure 9 has a “volume.” Pet. 37. The Reply does no better, asserting that “Doo’s shape 532 in Figure 9 and shape 432 in Figure 7 are virtual 3D shapes.” Reply 18. This statement is conclusory and does not explain how Doo’s “false 3D” shapes have volume. Petitioner further attempts to establish that Doo’s disclosure of Figure 9’s shape 532 as “mimic[ing] the surface curvature of the patient’s body” is evidence that Doo discloses a 3D shape. Id. (citing Ex. 1008 ¶ 76). This argument, however, is unpersuasive because it takes Doo’s statement out of context. Doo explains that Figure 9’s warped “two-dimensional image 532 . . . mimic[s] the surface curvature of the patient’s body,” not that it has volume. See Ex. 1008 ¶ 76 (emphasis added). In other words, even though Doo’s shape 532 of Figure 9, when projected on a patient’s body (as in Figure 7) may appear to a surgeon like a 9 Our Institution Decision did not rely on Petitioner’s theory based on Doo Figures 7–9. We discuss our Institution Decision’s reasoning below under Petitioner’s second theory based on Doo Figures 6 and 11. half-cylinder shape having a volume, Doo’s technique avoids rendering a 3D shape like a half-cylinder (hence calling these “false 3D shapes”) because it instead simulates the body’s curvature with a mere curved two-dimensional plane. Second, we find that Doo’s curved plane does not, in fact, have a volume.10 Instead, Doo’s curved plane is a 2D plane merely “wrapped around an axis.” See Ex. 1008 ¶¶ 75–76. As Patent Owner persuasively argued at the hearing, Doo’s curved plane is not “half of a cylinder. It’s just a wrapped piece of paper.” Tr. 33:14–15. Just as curving a piece of paper would not give the curved paper a half cylinder’s volume, neither does curving Doo’s flat 2D plane create a half cylinder with volume. Viewed another way, curving a 2D plane does not impart volume to the plane any more than curving a 1D line into a parabola would impart area to the 1D line.” slip op. at 12

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

    “The U.S. Supreme Court has emphasized that “rejections 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, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner’s argument fails this standard. Petitioner asserts a generic rationale that one of ordinary skill in the art would have applied Amira to Doo “to take advantage of the visualization technology disclosed in Amira (or any similar visualization software).” Pet. 41. But Petitioner’s assertion contains no explanation why one of ordinary skill would have taken advantage of Amira’s technology in the context of Doo. Petitioner’s rationale is so vague and broad that it could be applied to combine any two references because it merely asserts that one reference would “take advantage of the . . . technology disclosed in” another. See, e.g., In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been . . . ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’”). This approach wholly misses KSR’s “articulated reasoning” standard. See KSR, 550 U.S. at 418. The Reply’s assertion that reducing a surgeon’s cognitive load in Doo “suggests an improvement on conventional medical imaging displays, such as disclosed in Amira,” fares no better. Reply 20. This assertion again fails to explain why one of ordinary skill in the art would have combined Amira with Doo. For instance, Petitioner provides no explanation as to how Amira’s display would further reduce cognitive load. See Reply 19–20 (only vaguely referring to Amira’s “[t]racking capabilities [that] allow for . . . interaction with the visualization” (Ex. 1005, 14, 26)). Not only that, but Doo itself presents a solution for the cognitive load problem. See Ex. 1008 ¶ 14 (“The present invention is particularly adapted to manage the multitude of medical images needed to be viewed by a surgeon during an operation so that a surgeon is not required to look away from the patient, so that the surgeon does not have to sustain heavy cognitive loading.”). Petitioner does not persuasively explain why one of ordinary skill in the art would turn to yet another reference (like Amira) for an additional solution, or even what that solution would be.” slip op. at 23

  Patent outcomesUS 11,004,271 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,004,271
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588

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.