• PLR Worldwide Sales Ltd. v. Flip Phone Games, Inc.Some claims unpatentable
  PTAB · Apr 24, 2025 · IPR2024-00209 · APJ Scott B Howard · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

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

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

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

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

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

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

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

  Patent outcomesUS 9,427,662 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,662
• Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentable
  PTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 7,324,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,324,802
• Meta Platforms, Inc. / Instagram, Inc. et al. v. VL Collective IP LLCSome claims unpatentable
  PTAB · Dec 5, 2024 · IPR2023-00924 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 5–7, 9–11, and 13–15 are unpatentable as obvious over Zhao; claims 4, 8, 12, and 16 are not shown unpatentable.

  RulingsFinal written decision

  • BurdenFwd mixedMixed

    “Decision is a final written decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 as to the patentability of claims 1–16 of the ’980 patent. We determine Petitioner has shown by a preponderance of the evidence that claims 1–3, 5–7, 9–11, and 13–15 are unpatentable, and Petitioner has not shown by a preponderance of evidence that claims 4, 8, 12, and 16 are unpatentable.” slip op. at 2

  • Expert testimonyOther

    “being present in another image or comparing that probability to a detection threshold.”). Dr. Saber was consistent with this testimony on cross-examination. Ex. 1051, 167–251. When I weigh the evidence, I find it to be one-sided, with all of the expert testimony weighing against Petitioner or avoiding the issue altogether. Thus, I would not find that Petitioner has met its burden to prove, by a preponderance of the evidence, that Zhao teaches claim limitation 1e. Moreover, even if the Majority is correct about how Zhao’s RCR algorithm works, all that shows is that the detection of object presence in a previous image can be used to disambiguate segments (e.g., limbs) of an already detected object (e.g., a person), not that it can be used to detect the object in the image in the first place, as required by the claim language. For this additional reason, I would not find that Petitioner has met its burden.” slip op. at 84

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of” slip op. at 25

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

    “2. Reasons for Obviousness Based on Zhao On a limitation-by-limitation basis, Petitioner’s contentions of “obviousness” are primarily assertions of how a POSITA would have understood Zhao’s disclosures. For example, with regard to claim 1, Petitioner repeatedly asserts how “a POSITA would have understood Zhao” (Pet. 13, 18, 21, 27) and for each limitation contends that Zhao “disclosed or at least rendered obvious” (or a variation thereof) the limitation (id. at 13– 15, 17–18, 21, 23, 25–27). We will, accordingly, address these “obviousness” contentions when addressing the respective limitations.” slip op. at 25

  Patent outcomesUS 7,436,980 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,436,980
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

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

    “4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23

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

    “predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64

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

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00242 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either instituted ground; claims 1–13 were not shown unpatentable because the petitioner failed to prove the challenged combinations met the claims.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

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

    “3. “the rendered first webpage” Claim limitation 1dii recites “replacing the first and second objects within the 3D space with a window within a two-dimensional (2D) space in response to receiving the interaction, wherein the window includes the rendered first webpage.” Petitioner does not propose a construction for the term “the rendered first webpage” in the Petition. Pet. 13–14. Nevertheless, Patent Owner contends in the Patent Owner Response that “‘the rendered first webpage’ is the webpage that was requested by the user via the ‘first input’ from which the ‘first image’ was captured.” PO Resp. 13. As Petitioner summarizes, “[a]ccording to Patent Owner, ‘the rendered first webpage’ presented in 2D space ‘is the version that was previously received and rendered (e.g., stored in memory) from which the first image was captured. It is not a ‘live’ webpage from the Internet.’” Reply 6. Despite not proposing a construction in the Petition, Petitioner, in the Reply, asks us to construe “the rendered first webpage” to include either the previously received and rendered first webpage or a new (so called “live”) version of the first webpage rendered in response to receiving the user interaction of claim limitation 1dii. Reply 6–7. The plain and ordinary meaning of claim 1 supports Patent Owner’s argument. “To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Here, claim 1 refers to replacing the first and second objects with “the rendered first webpage,” which implies that the objects are not replaced with just any version of the first webpage. “Rendered” is in the past tense, suggesting a webpage that previously has been rendered. This is a clear reference to limitation 1ci, “rendering the first and second webpages.” Dr. Fuchs’ testimony is instructive. According to Dr. Fuchs, a skilled artisan “would have known that webpage rendering was a ubiquitous process for converting raw HTML code received from a web server into visible content.” Ex. 1003 ¶ 104. According to Dr. Fuchs, “[w]ebpage rendering is a core functionality of virtually all web browsers, and it would have been obvious to a [person of ordinary skill in the art] that rendering is a prerequisite step to obtaining ‘screen snapshots of actual web pages,’ as explained in Robertson’s companion Data Mountain paper.” Id. ¶ 105 (citing Ex. 1030, 5). Dr. Fuchs testifies that a skilled artisan “would have understood that Robertson’s 3D-GUI captures images of the rendered (first/second) webpages to obtain the webpage images on the object thumbnails.” Id. ¶ 107. Similarly, Dr. Fuchs testifies that “Gettman’s technique involves ‘cach[ing]’ ‘bitmap screenshots’ (captured first/second images) of rendered (first/second) webpages in local memory.” Id. ¶ 108. Here, as Dr. Fuchs reads claim limitations 1ci and 1cii, in step 1ci, a” slip op. at 20

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

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

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

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Ebates Performance Marketing, Inc. Dba Rakuten Rewards / Zillow Group, Inc. et al. v. International Business Machines Corp.Some claims unpatentable
  PTAB · Oct 11, 2023 · IPR2022-00646 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 12–16, 18, and 19 are unpatentable; claims 5–11, 17, and 20 are not unpatentable, based on the Sunada grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner

    “certain arguments based on the Kayak FWD. Reply 1–5. Yet, the Federal Circuit vacated the Kayak FWD and remanded to the Board for further consideration. Ex. 1006, 2 (“We vacate the Sunada IPR decision because it rests on an incorrect claim construction of the ‘federated computing environment’ limitation of all claims at issue, and we remand for further consideration under the correct construction.”), 8 (“The Board’s decision in IPR2016-00608 is vacated because it rests on an incorrect claim construction, and the matter is remanded for further proceedings consistent with this opinion.”).” slip op. at 8

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  • Skill levelOther

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Dr. Crovella, contends that a” slip op. at 17

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

    “shown that Sunada discloses “protected resources” under our claim construction of the term and, accordingly, Petitioner has not shown, by a preponderance of the evidence, that Sunada anticipates claims 1, 3, 12, 14, 15, and 18.” slip op. at 17

  Patent outcomesUS 7,631,346 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,631,346
• Koninklijke Philips N.V. / Philips North America LLC v. Fitbit, IncSome claims unpatentable
  PTAB · Aug 15, 2022 · IPR2021-00505 · APJ Stacey G White · IPR · Final written decision

  Claims 1, 2, 9–11, 16, 25, and 28 are unpatentable under § 102 as anticipated; claims 3–8, 12–15, 26, and 29 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we adopted Petitioner’s assessment of the level of skill in the art, with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. Dec. 7. Neither party provides substantive argument as to why its proposed level of skill is correct. Pet. 9; PO Resp. 2–3. We, however, are not persuaded that there is a material difference between the parties’ proposals. Based on this record, we apply the level of skill laid out in our Institution Decision (omitting the open-ended phrases “at least”) because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we find for the purpose of this Decision and based on the record before us, that a person of ordinary skill in the art at the relevant time would have a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and two years of experience in personal monitoring systems. We note, however, that our determinations on patentability would not change if we accepted Patent Owner’s proposed level of skill.” slip op. at 7

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

    “In our Institution Decision, we discerned a need to construe the term “activity points.” Dec. 8–11. There, we determined for the purposes of that Decision that “activity points” is broad enough to “include[] measures such as steps taken by the user, number of minutes the user has been active, or measures of energy expenditure such as a number of calories burned.” Id. at 11 (alteration in original). Patent Owner asserts that “the Board need not expressly construe this term to confirm the patentability of the challenged claims.” PO Resp. 4. Patent Owner, however, does not point out any error in our construction and based upon our review of the record, we are persuaded that our prior construction is correct and maintain our prior findings regarding the proper construction of activity points. Dec. 8–11. No other terms require express construction at this time. 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’”).” slip op. at 8

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

    “We find Petitioner’s arguments to be persuasive. The ’377 states that its device may “include one or more motion sensors.” Ex. 1001, 2:52–53. The subject patent further notes that “exemplary motion sensors which include, for example, one or more accelerometers.” Id. at 3:6–8. Indeed, Patent Owner points out that its “PO’s Response explained how the specification of the ’377 patent makes clear that a single claimed ‘sensor’ may include one or more sensing instruments.” Sur-Reply 2 (citing PO Resp. 7–12) (emphasis added). We find that the ’377 patent claims are not limited to a configuration in which multiple accelerometers would compose a single motion sensor. The ’377 patent specification explains that motion sensors may have one accelerometer and that the claimed device may have more than one motion sensor. See Ex. 1001, 2:38–46, 3:6–9. In addition, we are not persuaded that claim 1 requires “multiple different types of sensors.” See PO Resp. 8. While it is true that dependent claims 3–7 require specific types of sensors this does not limit the scope of the independent claims. Claims 1 and 25 recite that the plurality of sensors “generate sensor data which is representative of activity of the user.” Ex. 1001, 43:33–34, 46:3–4. Claim 10 recites that the plurality of sensors “generate sensor data which is representative of ambulatory activities of the user.” Id. at 44:10– 12. As such, we are persuaded that the claim language allows the use of any set of sensors that generates the requisite data (and includes the requisite “at least” one tri-axial accelerometer or three accelerometers as will be discussed below).” slip op. at 14

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

    “As such, Petitioner fails to establish why one of ordinary skill would have believed such a substitution to be desirable or in what way such a substitution would have been an improvement over Damen. Our inquiry into whether a sufficient motivation has been articulated by Petitioner is a flexible, but factual inquiry where we must determine whether sufficient evidence and argument have been presented to establish that one of ordinary skill in the art would have made such a modification. See Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1223 (Fed. Cir. 2022). The Federal Circuit “has recognized that an obviousness showing ‘does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.’” Novartis Pharms. Corp. v. West-Ward Pharms. Int'l Ltd., 923 F.3d 1051, 1059 (Fed. Cir. 2019) (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004)). Petitioner, however, still has a burden to establish a reason why a person of ordinary skill in the art would combine the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). It is not sufficient to merely show that a person of ordinary skill “could have made but [rather, Petitioner must establish that a person of ordinary skill in the art] would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). That is the missing element in Petitioner’s contentions. Petitioner has not articulated sufficiently a rationale for modifying Damen to replace its three accelerometers with a tri-axial accelerometer. Claims 11 and 16 depend from claim 10 and the arguments and evidence presented for these claims do not address the shortcoming as to motivation to combine we note in reference to claim 10. Thus, Petitioner has not proven by a preponderance of the evidence that claims 10, 11, and 16 would have been obvious over Kroll and Damen.” slip op. at 37

  Patent outcomesUS 8,868,377 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,868,377
• Apple Inc. v. Koss CoprorationSome claims unpatentable
  PTAB · May 31, 2022 · IPR2021-00305 · APJ David C Mckone · IPR · Final written decision

  Claims 1–4, 9, 10, and 14–17 are unpatentable as obvious; claim 18 was not shown unpatentable because the cited art did not teach its claimed digital signal processor.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “least a Bachelor’s Degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in wireless communications across short distance or local area networks.” Ex. 1003 ¶ 34. In the Institution Decision, we found Dr. Cooperstock’s testimony to be consistent with the technology described in the Specification and the cited prior art and adopted this level of skill for purposes of that Decision. Dec. 24. Mr. McAlexander testifies that a skilled artisan “would be someone working in the electrical engineering field and specializing in or knowledgeable of speaker components for small wireless devices,” and “would have had a bachelor’s degree in electrical engineering and at least two or more years of work experience in the industry. Ex. 2035 ¶ 19. According to Mr. McAlexander, “[s]uch a person would have studied and have practical experience with circuit design, speaker components, and wireless communication.” Id. Patent Owner states that this proposed level of skill “is not far removed from Petitioner’s [person of ordinary skill in the art].” PO Resp. 6. As Patent Owner acknowledges that the proposed levels of skill are similar, and does not argue that a difference in level of skill would lead to a different result in this proceeding, we continue to adopt Petitioner’s proposed level of skill.” slip op. at 13

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “uncorroborated. Reply 10. Petitioner then argues that Patent Owner mischaracterizes what is shown in its annotated Figure 5 and contends that Mr. Blair’s analysis of the various forces exerted on the earbuds is faulty. Id. at 10–15. In support, Petitioner offers testimony from Dr. Cooperstock, although that testimony is also conclusory and does not identify the basis for the testimony. Ex. 1023 ¶¶ 11–23. 5 Mr. McAlexander provides testimony that largely copies the arguments in Patent Owner’s Response. Ex. 2035 ¶¶ 37–43. His testimony, however, does not appear to be based upon his own knowledge or expertise and, instead, is based upon his reading of Mr. Blair’s testimony. We accord this testimony by Mr. McAlexander little weight. We need not evaluate which of the experts’ views on the various forces on a Figure 4/5 combination would have been correct. Patent Owner improperly limits Petitioner’s arguments (and Rosener’s disclosure) to a combination of separate embodiments shown alternately in Figures 4 and 5. We agree with Petitioner (Pet. 34–35; Reply 18) and find that Rosener expressly describes earbuds with curved hanger bars. Specifically, Rosener states that “[e]ach of the first and second earphones 502, 504 may be in the form of an earbud designed to fit into the concha of the pinna of the user’s ear,” and that “[e]ach of the first and second earphone 502, 504 may further include a clip, earloop, or other suitable securing mechanism to help maintain the earphone 502 or 504 on the ear of the user.” Ex. 1004 ¶ 30. We read Petitioner’s annotated Figure 5 (shown above) as an illustration of how these expressly described features might look together, as Rosener does not have a figure depicting that embodiment. Petitioner relies on Figure 4 to show that “earloops” in fact correspond to “curved hanger bars,” not to show precise structure that would be bodily incorporated into the embodiment depicted in Figure 5. We do not read Petitioner’s annotated Figure 5 as a proposed physical combination of different embodiments within Rosener. Patent Owner’s characterization of Petitioner’s combination is not the correct lens through which we analyze obviousness. See In re Keller, 642 F.2d 413, 425 (Fed. Cir. 1981) (“To justify combining reference teachings in support of a rejection it is not necessary that a device shown in one reference can be physically inserted into the device shown in the other.”).” slip op. at 22

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

    “argues that Rosener describes a battery, but concedes that “Rosener does not explicitly describe the batteries being rechargeable.” Pet. 44–45 (citing Ex. 1004 ¶ 30). Petitioner contends that Huddart teaches a rechargeable battery. Id. at 45 (citing Ex. 1005, 5:26–30). According to Petitioner, “[t]o the extent that Rosener is deemed to not disclose rechargeable batteries, [a person of ordinary skill in the art] would have found it obvious to incorporate a rechargeable battery (e.g., earbud battery) as taught in Huddart into each of Rosener’s earphones 502, 504 for providing power to earphone components.” Id. Citing Dr. Cooperstock’s testimony, Petitioner argues that a skilled artisan “would have understood . . . that Rosener’s earphones could have incorporated rechargeable batteries since this configuration was conventional around the time of its disclosure, as demonstrated by Huddart.” Id. at 27 (citing Ex. 1003 ¶ 48). Petitioner contends that rechargeable batteries would have improved Rosener’s earphones “by eliminating or reducing the need to periodically replace the batteries, thereby removing or reducing the cost of doing so and also improving user convenience.” Id. (citing Ex. 1003 ¶ 49). Dr. Cooperstock further testifies that Rosener’s earphones would have benefited from rechargeable batteries in the same manner as Huddart’s earbuds, e.g., in that the user could avoid frequent battery replacements. Ex. 1003 ¶ 50. We credit Dr. Cooperstock’s testimony and find that a skilled artisan would have had reasons to (e.g., cost, convenience, avoid the need to replace batteries) to incorporate Huddart’s teaching of rechargeable batteries into Rosener’s earphones, and would have had a reasonable expectation of success in doing so.” slip op. at 26

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

    “between the Powerbeats Pro and claims 1–18 of the ’325 Patent, the Board should presume a nexus between the commercial success of the Powerbeats Pro and claims 1–18.” PO Resp. 41. In support of this argument that the Powerbeats Pro product is coextensive with the claimed invention, Patent Owner cites to its infringement contentions served in the Texas case, and argues that “claims 1–18 of the ’325 Patent read on the Powerbeats Pro.” Id. at 38 (citing Ex. 1014, 1079–113), 40 (same); Sur-reply 19 (“The [Patent Owner Response] cited an exhibit, APPLE-1014, 1079–1113, that includes a detailed claim chart showing that the PowerBeats Pros possess all the elements of the Challenged Claims.”). Patent Owner does not provide a detailed comparison of the Powerbeats Pro with the challenged claims in its Response. PO Resp. 37–42. At most, Patent Owner points out certain features of the Powerbeats Pro, such as being “completely wireless” and having a “a signature earhook design.” Id. at 37–38, 40. However, Patent Owner’s attempt to incorporate its infringement contentions by reference into the Response is contrary to our rules, and those infringement 9 Patent Owner’s evidence of commercial success shows success at the level of a category that would include the Powerbeats Pro, but does not break out the Powerbeats Pro individually. PO Resp. 38, 41–42 (citing Exs. 2037, 2038). Nevetheless, Petitioner does not contest that the Powerbeats Pro product has been commercially successful. contentions will be disregarded. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Accordingly, Patent Owner has not shown that the Powerbeats Pro practices the invention of the challenged claims and, for that reason, has not shown that the Powerbeats Pro is coextensive with the challenged claims.” slip op. at 43

  Patent outcomesUS 10,506,325 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 10,506,325
• Western Digital Corporation / Western Digital Technologies, Inc. et al. v. Martin KusterSome claims unpatentable
  PTAB · Feb 10, 2022 · IPR2020-01391 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 11, 12, and 14–19 are unpatentable: claims 11 and 12 are anticipated by Hsiao, and claims 11 and 14–19 are obvious over He and Cheng or He, Cheng, and Hiller.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposed level of ordinary skill does not differ materially from that presented by Mr. Welch. Both require a bachelor’s degree in many of the same fields and roughly one to two years of experience with USB protocols or USB product development. The arguments presented by Petitioner and Patent Owner do not indicate that the outcome of this case would change depending on the level of ordinary skill in the art. We, therefore, adopt Petitioner’s description, which we determine to be consistent with the level of skill reflected in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that we would reach the same conclusions under either proposed level of ordinary skill.” slip op. at 8

  • BurdenDecided for patent owner

    “Proof of conception must be by “corroborating evidence which shows that the inventor disclosed to others his ‘completed thought expressed in such clear terms as to enable those skilled in the art’ to make the invention.” Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (citing Field v. Knowles, 183 F.2d 593, 601 (CCPA 1950)); see also Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996) (corroboration requirement “arose out of a concern that inventors testifying in patent infringement cases would be tempted to remember facts favorable to their case by the lure of protecting their patent or defeating another’s patent”). Similarly, an inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169–71 (Fed. Cir. 2006). Instead, a party seeking to prove an actual reduction to practice must proffer evidence corroborating that testimony. Id. at 1170. The sufficiency of corroboration is determined according to a “rule of reason.” Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993). This, however, does not dispense with the requirement that some independent evidence provide corroboration. Coleman, 754 F.2d at 360. The requirement of “independent” corroboration requires evidence other than the inventor’s testimony. In re NTP, Inc., 654 F.3d 1279, 1291–92 (Fed. Cir. 2011). 3. Discussion We find that Patent Owner has not met its burden of establishing that Mr. Kuster conceived and reduced to practice his invention prior to the filing dates of Hsiao or He. By itself, Mr. Kuster’s testimony is insufficient to establish that he reduced his invention to practice prior to the November 23, 2010, filing date or Hsiao or the June 2, 2010, filing date of He. “Throughout the history of the determination of patent rights, oral testimony by an alleged inventor asserting priority over a patentee’s rights is regarded with skepticism, and as a result, such inventor testimony must be supported by some type of corroborating evidence.” Woodland Tr. v. Flowertree Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998) (quoting Price, 988 F.2d at 1194). Patent Owner has failed to provide sufficient independent evidence corroborating Mr. Kuster’s testimony.” slip op. at 20

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

    “We do not agree with this argument. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” so the fact that it would take some creativity to carry out the combination does not defeat a finding of obviousness. KSR, 550 U.S. at 421; see also ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016) (“The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B.”). We find there is support for making this combination of He and Cheng in the testimony of Dr. Baker that addition of a controller is “conventional” in USB flash drives. Baker Decl. ¶ 167. We find that for the reasons given by Dr. Baker, a person of ordinary skill would have added a controller to He. We determine that the combination of He and Cheng teaches each limitation of claim 11. We address Patent Owner’s argument that there are objective indicia of obviousness, infra. We conclude that Petitioner has demonstrated that claim 11 would have been obvious over He and Cheng.” slip op. at 37

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for patent owner

    “attorney argument, not evidence.” Pet. Reply 26. We agree. Patent Owner does not back up its argument with testimony or other credible evidence. To demonstrate long-felt need, a patentee must point to an “articulated identified problem and evidence of efforts to solve that problem” which were, before the invention, unsuccessful. Tex. Instruments v. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir. 1993). All Patent Owner proves, if anything, is that after the USB 3.0 specification issued, a number of companies rushed in to provide contacts that met the new standard. Patent Owner does not demonstrate that they failed where Mr. Kuster succeeded. In fact, there is no evidence that Mr. Kuster ever commercialized his invention.8 8 Victorinox never paid for the work Mr. Kuster did on the USB 3.0 memory device, and to Mr. Kuster’s knowledge, never marketed the product. Kuster Dep. 22:21–24:13. Patent Owner contends “Mr. Kuster’s invention filled the existing need for a durable yet slim USB flash drive compatible with USB 3.0 that was easy to manufacture.” PO Resp. 77. But instead of presenting independent evidence of failure of the others to solve known technical or manufacturing problems, Patent Owner relies on generalized statements concerning the need for USB 3.0 connectors and solutions by others that Patent Owner contends have not been successful. PO Resp. 74–77. We are not persuaded by Patent Owner’s argument that Mr. Kuster’s alleged invention filled a long-felt need where others failed.” slip op. at 29

  Patent outcomesUS 8,693,206 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,693,206
• Veeam Software Corp. v. Hybir Inc.Some claims unpatentable
  PTAB · Dec 2, 2021 · IPR2020-01038 · APJ John R Kenny · IPR · Final written decision

  Claims 30, 32, 33, 35, and 37–40 are unpatentable as obvious; claims 31, 34, and 36 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “E. Level of Skill in the Art To determine the level of an ordinarily skilled artisan, various factors” slip op. at 10

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

    “claim terms for construction at that stage of the proceeding, and we did not construe any claim terms expressly as none of the terms were in dispute. Inst. Dec. 22. In the briefing following institution, Patent Owner proposed a construction for the term “inventory,” see, e.g., PO Resp. 21–28, and it became clear that the parties dispute the meaning of the term. Accordingly, we address the parties’ proposed constructions for “inventory” and the arguments they present for those constructions.” slip op. at 13

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

    “As set forth above, we resolved those disputed issues in favor of Petitioner. For the portions of the preamble and limitations of claim 35 that are not recited in claim 30, we have reviewed Petitioner’s arguments and evidence for claim 35 and are persuaded that Field teaches or suggests the preamble and claim limitations. Pet. 25–28 (and the exhibits cited therein). Thus, we find that Field teaches or suggests all limitations of claim 35. Accordingly, we determine Petitioner has proven that claim 35 would have been obvious over Field.” slip op. at 55

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

    “metadata into its signature generating algorithm to create a more robust signature. Ex. 1005 ¶ 46. An ordinarily skilled artisan would have been motivated to use such an augmented signature generating algorithm in Field’s environment. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Thus, an ordinarily skilled artisan would have modified Field’s cryptographic signature generating algorithm so it would compute a file’s signature using a file’s metadata. Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40. Accordingly, Field and Anderson disclose that “the cryptographic signature is also computed with the metadata.” Ex. 1002 ¶¶ 138–139; Ex. 1004 ¶ 40.” slip op. at 76

  Patent outcomesUS 8,051,043 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,051,043

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.