• Røde Microphones, LLC / Freedman Electronics Pty Ltd. v. Zaxcom, Inc.No claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00230 · APJ Miriam L Quinn · IPR · Final written decision

  The Board determined that Petitioner had not shown any challenged claims of the ’443 or ’207 patents unpatentable, including under the asserted obviousness grounds.

  RulingsFinal written decision

  • Expert testimonySkill level petitioner adoptedOther

    “E. Level of Ordinary Skill in the Art Based on the argument and evidence presented in the Petition and Patent Owner’s preliminary response, we determined, as stated in our Decision on Institution, that “a person of ordinary skill in the art would have had a Bachelor’s degree in electrical engineering and two or more years of experience working with audio and wireless communications systems.” 230 Dec. on Inst. 16; 232 Dec. on Inst. 22−23. Patent Owner reiterates its position that a person of ordinary skill the art would have had “a bachelor’s degree in electrical engineering or a related subject and two to five years’ experience working with multi-track audio and wireless communications systems in the professional performance industry.” 230 IPR, PO Resp. 6−7 (emphasis added) (identical passage in 232 PO Resp. 8). Thus, the dispute centers on whether the level or ordinary skill includes specific work experience with multi-track audio in the professional performance industry. We do not agree that this specific work experience is necessary to the level of ordinary skill in the instant proceedings. In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere, 383 U.S. 1, 17−18 (1966). “The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu‑Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). The “person of ordinary skill in the art” is a hypothetical construct, from whose vantage point obviousness is assessed. In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998). In determining the level or ordinary skill, we may consider various factors including “type of problems encountered in the art; 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, 57 F.3d 1573, 1579, (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Patent Owner’s proposed specificity of work with multi-track audio in a professional performance industry is not supported by the record. First, Patent Owner submits conclusory declaration testimony of James DeFilippis—repeating verbatim, and without any supported reasoning, Patent Owner’s proposed level of ordinary skill. Ex. 2140 ¶ 15. As such, the testimony is not persuasive. Second, Patent Owner’s additional declaration testimony of Jack” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for petitioner

    “data” means “mono or stereo audio files created from independent, isolated locally generated audio files, such files suitable for creation of a multi-track audio file.” 230 PO Resp. 9−10 (citing Ex. 2140 ¶¶ 131, 134). This argument is unsupported by the claim language or specification. The claim does not require the creation of audio files, much less a “multi-track audio file.” The specification describes storing audio files in memory without the specificity that Patent Owner urges we adopt. See 230 IPR, Ex. 1001, 13:1−14. Accordingly, we are not persuaded by Patent Owner’s proposed construction of “local audio data.” Rather, we understand “audio data” to have a plain and ordinary meaning, such as the one given to the term by the District Court in the underlying litigation. 230 IPR, Ex. 1037, 10. We adopt the District Court’s construction of “audio data” to mean “data comprising audio signals in digital form.” Id. This finds support in the specification as the audio is described as being converted into digital audio and stored in a file. See 230 IPR, Ex. 1001, 13:1−14. Our conclusion is consistent with the plain and ordinary meaning of the term as that would be understood by a person of ordinary skill in the art, and we see no reason to deviate from the conclusions of the District Court on this point.” slip op. at 21

  • ExcludeMotion to exclude, deniedDenied

    “irrelevant under Federal Rules of Evidence 401–403. Patent Owner asserts that Petitioner has failed to establish that these documents reflect the understanding of a person of ordinary skill in the art, or that they are consumer-oriented documents, but not technical references or sources for understanding the meaning of claim terms. 230 IPR, Paper 64, 3−4. According to Patent Owner, these exhibits lack a “technical foundation” that establishes the technical meaning of a claim term. Id. We do not agree with Patent Owner as it conflates relevance with sufficiency of evidence to prove a contention on claim construction. Dictionary definitions are often useful when determining a claim term’s plain and ordinary meaning in the context of the specification, and as such are relevant when claim terms are disputed. Phillips, 415 F.3d at 1312. Furthermore, the evidence of record shows testimony as to whether the “Sweetwater” glossary entry for “body pack” would be relevant to the meaning of the term in the “world of wireless performance.” 230 IPR, Paper 67, 4 (citing Ex. 1073 ¶ 42). Patent Owner’s objections are overruled as to relevance.” slip op. at 116

  • BurdenFwd all claims patentableNot shown unpatentable

    “after a full and fair hearing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that any of the challenged claims are unpatentable.” slip op. at 125

  Patent outcomesUS 7,711,443 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,711,443
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 24, 2026 · IPR2024-01256 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6, 10–14, 16, and 17 were not shown unpatentable because Ahn and Chaudhri did not teach or suggest the claimed movement of an object during the gesture.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “interface objects and, more specifically, the display of user interfaces on applications, in accordance with contacts on the touch-sensitive surface of a display. Ex. 1001, (54), Abstr. Consistent with the scope of the ’727 patent, we find that the level of skill in the art is reflected in a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces, human-computer interfaces, or equivalents.” slip op. at 6

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

    “Because there is no dispute as to the scope and meaning of these terms, and for consistency with the Decision on Institution, we apply the meaning of the terms “blur” and “distance magnitude” as stated above where applicable. However, we note that our determination does not hinge on the meaning of these terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “it was “known to utilize ‘cues’ to help the user know what gesture to utilize and whether they are correctly performing the gesture (e.g., graphics such as movable images that help the user visualize the correct gesture and how to complete it successfully).” Pet. 40 (citing Ex. 1005, Abstract, ¶¶ 54, 62, 73). This sentence does not cure the deficiency noted above regarding Petitioner’s reliance on Ahn’s graphic shadow moving with a gesture. Chaudhri is relied on for the proposition that, Ahn’s graphic shadow is “[i]ndeed” a movable image known to give a user a visual cue. Id. But no such “cue” is provided in Ahn by the graphical shadow alone, because there is no movement of that object. The Petition does not present argument that a Chaudhri object is the movable object or how any of Chaudhri’s teachings of movable objects would have suggested to modify Ahn “to thereby move” the graphical shadow.” slip op. at 18

  • Strike new argumentNew argument disregardedDecided for patent owner

    “the theory that Ahn’s graphic shadow moves. Reply 3−4. Petitioner interprets the sentences in Ahn we have analyzed above in conjunction with testimony of Dr. Terveen to argue that temporal descriptions in Ahn make it obvious for a person of ordinary skill in the art to drag in the right direction while continuing to press the graphic 1800. Id. (citing Exs. 1004 ¶¶ 117−119, Ex. 1023 ¶ 10). The Petition, however, relies on an Ahn disclosing a moving graphic shadow according to the embodiment of Figure 18(a), as described in paragraph 118. Petitioner now changes its theory of how Ahn’s graphic shadow would move according to paragraph 119, i.e., that although the graphic shadow is merely pressed (in the embodiment shown in Figure 18(b)) it would also be dragged while pressed. Reply 3. Not only is this a shift from the theory Petitioner presents in the Petition, it is not persuasive. As Patent Owner argues, and we agree, there is no cogent explanation for modifying the graphic shadow embodiment of Figure 18(b), especially in light of Ahn’s disclosure that the graphic shadow disappears when pressed and the menu list is displayed as emerging. Sur-reply 2−3. In other words, Petitioner’s new argument does not account for Ahn’s teaching that the objective of the graphic shadow is merely to notify the user of the start of the gesture, and once that start of the gesture is detected (the press on the graphic shadow), paragraph 119 informs us that there is no longer a need for the graphic shadow—it disappears from the display. Ex. 1004 ¶ 119. The Petition does not offer any argument for a theory in which the gesture of paragraph 119 (the press, not a touch and drag operation) results in graphic 1800 disappearing, while also moving during the disappearance. We are mindful that “[i]t is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc. v. Barnes-Hind / Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). Consequently, we determine that Petitioner’s argument in Reply belatedly relying on the different embodiment of paragraph 119 is improper new argument, and that even if considered it is not persuasive.” slip op. at 20

  Patent outcomesUS 11,740,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,740,727
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01116 · APJ Sharon Fenick · IPR · Final written decision

  Petitioner did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, or 230 unpatentable because the asserted combinations did not establish the claimed blurring …

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “(Ex. 1003), that a person of ordinary skill in the art (“POSITA”) would have had “a Bachelor of Science degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof,” and that “[a]dditional years of experience could substitute for an advanced-level degree (and vice-versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–30).” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner argues that “even under [this] interpretation of Ahn, the only difference between Ahn and the claims is whether the animation occurs in direct correspondence with a user’s dragging gesture or after the dragging gesture is complete – a straightforward design choice if ever there was one.” Pet. Reply 3–4 (citing Ex. 1024, 99:16–108:20; Ex. 1023 ¶ 12). However, as Patent Owner argues (PO Sur-reply 7–8) this argument is presented in Reply and is an improper shift of theory from the Petition. Nevertheless, were we to consider it, we would not find it compelling; Dr. Terveen’s cited testimony repeats this bare statement and is not supported by any evidence or additional explanation. Ex. 1023 ¶ 12; see 37 CFR § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (Aug. 24, 2022) (precedential) (assigning little weight to opinion testimony that “merely repeats” conclusory statements in a brief, without “cit[ing] any additional supporting evidence or provid[ing] any technical reasoning to support [the declarant’s] statement”).” slip op. at 29

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Feb 10, 2026 · IPR2024-01115 · APJ Sharon Fenick · IPR · Final written decision

  Apple did not prove claims 1, 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191, 192, 197, 199–204, 208–216, 223, 225, and 230 unpatentable over the asserted Ahn combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “In the Decision on Institution in each proceeding, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advancedlevel degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 15–16. Patent Owner “does not agree with all aspects of Petitioner’s proposed level of ordinary skill” but did not propose an alternative definition. PO Resp. 10–11. Patent Owner’s declarant, Dr. Rosenberg, adopted Dr. Terveen’s definition for the purposes of his declaration. Ex. 2018 ¶¶ 32–33. We again adopt the main portion of Dr. Terveen’s definition, and determine that one of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers.” This definition is commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony.” slip op. at 9

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

    “C. Claim Construction In these proceedings, there is no controversy that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Obviousness of Claims 2, 27, 37, 58, 60–64, 67–79, 186, 187, 189, 191,” slip op. at 10

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

    “obviousness of the menus in the Ahn-Chaudhri combination following a user’s finger as the user performs the dragging gesture to open the menu.” Pet. Reply 2 (citing 01119-Petition, 26–33, substantially identical to Pet. 32– 40). However, again, the Petition does not explain an alternative theory in which Chaudhri supplements Ahn’s menu functionality to move that menu onto the screen, as opposed to teaching visual cues provided by gradual changes of the display during a gesture or the visual cue that an unlock image may provide during the unlock gesture. See Pet. 14–18 (describing Chaudhri teaching “visual differentiation” or “transitioning an optical intensity” between a user-interface object and the background, based on, e.g., transparency), 35–40 (same). In Reply, Petitioner adds evidence to attempt to support its contention that the combination teaches a menu following a user’s finger during a dragging gesture, involving references to Chaudhri’s discussion of a visual cue, further discussing Chaudhri’s unlock image. Ex. 1005 ¶¶ 54, 62, 74–79, Figs. 5A-5C (cited at Pet. Reply 4–5). With respect to these citations and arguments, even if they had been timely presented in the Petition, we agree with Patent Owner that they do not articulate a modification of Ahn with Chaudhri or a motivation to combine. PO Sur-reply 6. Additionally, we agree that these embodiments of Chaudhri are distinct from the cited portions of Chaudhri discussed with respect to this theory in the Petition, which relate not to the movement of displayed graphics, but to variations of optical intensity and visual cues. Id. at 6–7. We evaluate the Petition’s arguments in light of Petitioner’s statement in Reply that they require a teaching regarding “menus . . . following a user’s finger as the user performs the dragging gesture.” Pet. Reply 2. To the extent that the Petition shows that the combination of Ahn and Chaudhri would show visual changes as the user performs a dragging gesture, these do not relate to the movement of a menu, but rather to other optical effects. Thus, as we do not find that the Petition supports an Ahn-Chaudhri combination in which a menu follows a user’s finger as the user performs the dragging gesture to open the menu, as Petitioner argues, we determine that Petitioner has not shown limitation 2.d of claim 2 taught or suggested by the combination of Ahn and Chaudhri according to this theory.” slip op. at 31

  • BurdenNot shown unpatentable

    “(3) Conclusion For the reasons discussed above, Petitioner has not shown limitation 2.d to be taught, suggested, or otherwise rendered obvious by Ahn and Chaudhri. Thus, we determine that Petitioner does not show by a preponderance of the evidence that claim 2 would have been obvious over the combination of Ahn and Chaudhri.” slip op. at 32

  Patent outcomesUS 10,656,754 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,754
• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Dec 31, 2025 · IPR2024-01085 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 were not shown unpatentable under either § 103 ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 9. We continue to adopt Petitioner’s stated level of ordinary skill in the art.5 C.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 4. We agree with the parties that no express construction of any claim term is necessary. D.” slip op. at 10

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We agree with Patent Owner (PO Resp. 13) that when Ording refers to user interfaces that are “intuitive and transparent,” “transparent” in that context does not mean optically transparent but something readily understandable, like the preceding word “intuitive.” That makes more sense in context. Patent Owner’s expert, Dr. Mahon, explains that Ording’s paragraph 28, where the phrase “intuitive and transparent” is found, is not concerned with optical transparency, but with increasing user satisfaction with portable devices by offering multifunctional operations on user interfaces based on finger input. Ex. 2012 ¶ 54. Neither Petitioner nor Dr. Cockburn explains why “transparent” in that context should mean optically transparent. We credit the testimony of Dr. Mahon, and reproduce paragraph 28 of Ording below: The various applications that may be executed on the device may use at least one common physical user interface device, such as the touch screen. One or more functions of the touch screen as well as corresponding information displayed on the device may be adjusted and/or varied from one application to the next and/or within a respective application. In this way, a common physical architecture (such as the touch screen) of the device may support the variety of applications with user interfaces that are intuitive and transparent. Ex. 1006 ¶ 28. We credit Dr. Mahon’s testimony that “Ording is addressing [in paragraph 28] user interfaces that are user-friendly and intuitive to navigate and operate.” Ex. 2012 ¶ 55.” slip op. at 33

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

    “The Zlider widget already is the least intrusive in the form as disclosed in the Ramos Paper/Ramos Video, placed off to the side of image content, not above and overlapping with image content. Petitioner’s semitransparency solution is for a self-created problem that otherwise does not exist, i.e., blocking the image by placing the Zlider widget directly over image content in Ording’s device. This is not reasoning with rational underpinning for making the Zlider widget partially semitransparent. Even assuming that the Zlider widget is properly placed directly over a camera image, making the Zlider widget semitransparent does not solve the intrusion problem, because the image and the Zlider widget may obscure each other, as shown in these illustrations provided by Patent Owner: [The illustrations show interference between a semitransparent Zlider widget and an underlying image] In its Reply, Petitioner asserts that it would have been well within the skill level of one of ordinary skill in the art to make adjustments to address a problem caused by such obscuring, such as by making the Zlider widget more visible as shown below: [The illustration shows one way Petitioner asserts one of ordinary skill in the art may apply to solve the obscuring issue (Reply 5–6)] Petitioner’s argument is misplaced. Although there may be graphic display techniques one of ordinary skill in the art may adopt to reduce the visibility problem if the Zlider widget were moved to directly above the image content as Petitioner proposes, that does not cure the problem of lacking a reasonable motivation to place the Zlider widget of the Ramos Paper/Ramos Video directly over image content. Still, there is the least obscuring and the least intrusion with the Zlider widget remaining where it is shown to be in the Ramos Paper/Ramos Video, side-by-side relative to the image content. It is irrational to make a modification that creates a problem, solely on the basis that a solution may be available to reduce the severity of the problem. Indeed, such a strained rationale shows that hindsight has played a part on Petitioner’s contention that a person of ordinary skill in the art would have put the Zlider widget over content as required by the claims.” slip op. at 30

  Patent outcomesUS 10,649,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,649,580
• Ericsson Inc. / Nokia Of America Corporation v. XR Communications LLCNo claims unpatentable
  PTAB · Oct 3, 2025 · IPR2024-00613 · APJ Kara L Szpondowski · IPR · Final written decision

  Claims 1–5, 8–12, and 15–19 were not shown unpatentable because Petitioner did not sufficiently show that Agee alone or with Butler teaches the claimed signal information and weighting-value determinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “including the design of beamforming using multiple antennas.” Pet. 6. Petitioner contends that a person having ordinary skill in the art would have at least a Bachelor’s degree in Electrical Engineering or equivalent, and at least two years of work experience. Id. at 6–7. Petitioner adds that “[a] more advanced degree can substitute for some work experience.” Id. at 7 (referencing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge Petitioner’s proposed definition. PO Resp. 8. In our Institution Decision, we adopted Petitioner’s proposed definition, finding it to be consistent with the prior art of record and the skill reflected in the Specification of the ’235 patent, and previous proceedings concerning the ’235 patent. Inst. Dec. 13 (citing IPR2022-00367, Paper 10 at 24 (PTAB July 14, 2022); IPR2022-01155, Paper 11 at 13–14 (PTAB Jan. 5, 2023)). We continue to do so here.” slip op. at 13

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

    “C. Claim Construction The parties agree that the claims of the ’235 patent should be given their plain and ordinary meaning. Pet. 6; PO Resp. 8. Patent Owner also provides claim constructions adopted in related district court litigations for certain terms. PO Resp. 9–10. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any particular claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “each antenna” and “Agee’s Butler matrix measures a different signal strength for each of the 32 OFDM tones (channels) on each antenna” (Pet. 62), Agee does not describe that its Butler Forming Mode circuitry determines (or measures) signal strength. Rather, Petitioner relies on unsupported testimony from Dr. Mahon. Pet. 61 (citing Ex. 1003 ¶¶ 513– 536). Although Dr. Mahon affirmatively states that Agee discloses measuring the “signal strength” for limitations [1.4] and [1.5], he only quotes Agee’s column 45, lines 4–28 to conclude that “such measurements are detecting and processing the signal strength in the passages regarding the OFDM vector receiver receiving and detecting data induced on each antenna.” Ex. 1003 ¶ 524. However, the testimony provides no further explanation as to why this is the case other than quoting the paragraph. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Agee is not self-explanatory on this point. See Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). Consequently, assessing the probative value of the testimony, we find that the bare, unintelligible statements regarding Agee and how it allegedly teaches “signal strength” are entitled to little weight.14 14 We recognize that at the Decision on Institution stage, the panel credited Dr. Mahon’s testimony with respect to how the Butler matrix detects different phased signals at the antenna for limitations [1.3]−[1.5]. Inst. Dec. 24–28. Upon review of the full record, and in consideration of the preponderance of the evidence standard, however, we no longer view the testimony sufficiently supported. The “Board has an obligation to assess the question anew after trial based on a totality of the record, particularly where Further, it is unclear from both Petitioner’s contentions and Dr. Mahon’s testimony whether Petitioner is arguing that such functionality is inherent in Agee’s Butler matrix, common knowledge, how a person of ordinary skill in the art would understand Agee in light of general Butler matrix functionality, or something else entirely. See Netflix, 84 F.4th at 1377 (stating that “the Board should . . . not have to decode a petition to locate additional arguments beyond the ones clearly made”). Petitioner also does not provide sufficient support for these contentions from Butler. In sum, Petitioner relies on Dr. Mahon’s testimony for the contentions in limitations [1.4] and [1.5], at least with regard to determining “signal strength” as the recited determining first and second “signal information.” As explained in our Consolidated Trial Practice Guide15 (Nov. 2019) at 36: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis . . . Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 the standard changes.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1377 (Fed. Cir. 2016). “[T]he Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, 812 F.3d at 1068. 15 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself.” slip op. at 26

  • BurdenNot shown unpatentable

    “To that end, we find Petitioner’s contentions and evidence are insufficient as to limitations [1.4] and [1.5]. However, even assuming, arguendo, that Petitioner’s reliance on Dr. Mahon’s testimony is sufficient to show that limitations [1.4] and [1.5] are taught by Agee, i.e., that it is “evidently and indisputably within the common knowledge of those skilled in the art,” Petitioner still must show that the set of weighting values is determined based upon the signal strength, as recited in limitation [1.6]. As we discuss below, Petitioner’s contentions and evidence are insufficient for limitation [1.6].” slip op. at 28

  Patent outcomesUS 10,715,235 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,715,235
• 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
• Samsung Electronics Co., Ltd. v. Almondnet, Inc.No claims unpatentable
  PTAB · Feb 2, 2024 · IPR2022-01259 · APJ Charles J Boudreau · IPR · Final written decision

  The Board held claims 35–51 not unpatentable because the asserted combinations did not show that the claimed computers automatically authorize a distinct third-party second media property to allow ad display.

  RulingsFinal written decision

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

    “Having considered the parties’ arguments, we agree with Petitioner that the recited “system” of claim 35 does not necessarily exclude a “third-party second media property.” As Petitioner points out, claim 35 uses the open-ended transitional phrase “comprising,” such that the recited “system comprising one or more computers” may include components other than the recited “one or more computers.” See Pet. Reply 1 (citing CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Moreover, we agree with Petitioner that the phrase “programmed to implement a method of directing electronic advertisements” more naturally modifies “one or more computers,” rather than “system.” Id. at 3. Nonetheless, it is clear from the plain language of claim 35, as well as from the prosecution history of the related ’745 patent, that the third-party second media property must be distinct from such “one or more computers.” Petitioner’s repeated use of the abbreviation “TPSMP” obscures the fact that claim 35 does not simply recite a “second media property” but instead specifically recites a “third-party second media property.” Ex. 1001, 16:18–19 (emphasis added). Highlighting the significance of the modifier “third-party,” as Patent Owner points out, is the fact that that modifier was added to “second media property” in the phrase “automatically electronically authorizing, with at least one of the computers, a third party second media property to allow display, to the electronic visitor when later visiting the second media property, of an advertisement” in an Examiner’s amendment during prosecution of the ’822 patent’s grandparent ’286 application to avoid certain prior art, and the prosecution record of the ’286 application reflects that this amendment was made to make it clear that the recited “authorizing is being done of an unrelated site.” Ex. 2005, 58; see PO Resp. 10–11. More particularly, as Patent Owner points out, the applicant stated in the cited examiner interview report that “the claim structure already made [it] clear” that “the authorizing is being done of an unrelated site . . . because the phrase ‘authorizing’ a site does not seem to cover a site deciding something on its own,” but that the amendment to specify a “third party second media property” made that requirement “explicit.” Ex. 2005, 58; see PO Resp. 7–8 (quoting the same).” slip op. at 23

  • Skill levelSkill level petitioner adoptedOther

    “We adopt Petitioner’s articulation of the level of ordinary skill in the art, minus the phrases “at least” modifying the education and “or more” modifying the number of years of experience. As we explained in our Institution Decision, although Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art, inclusion of such qualifiers render the articulation vague by being open-ended thus encompassing the level of education and experience of an expert, someone with more than ordinary skill in the art. See Dec. 12. Thus, in summary, we find that one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent, and two years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field, where more education could supplement practical experience and vice versa.” slip op. at 12

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

    “Having considered the parties’ respective contentions in light of the evidence of record, we conclude that Petitioner has not established by a preponderance of the evidence that claim 35 is unpatentable over the combination of Perry, Wilson, and Bronson. In particular, we are not persuaded that the cited prior art teaches or suggests “a system comprising one or more computers programmed to implement a method . . . comprising: . . . automatically electronically authorizing a third-party second media property to allow display . . . of an advertisement correlated with the profile-attribute information received about the visitor.” Although Figure 1 of Perry depicts a “system” that includes computers programmed to implement a method of distributing advertisements to users over the Internet, we are not persuaded that any component in that system implements a method that includes “automatically electronically authorizing a third-party second media property” to display such advertisements. As Patent Owner points out, Petitioner identifies “Internet publisher computer systems 131 and 132” and “advertising service company computer system 140 comprising one or more CPUs 141” as the recited “one or more computers.” Pet. 7; PO Resp. 11. Although there is no dispute that Publisher Systems 131 and 132 and ASC 140 are computers, we find that neither satisfies the remaining limitations of claim 35, particularly because neither “automatically electronically authoriz[es] a third-party second media property” to display advertisements. As we explain in our claim construction discussion above, we are not persuaded by Patent Owner’s arguments that the recited “system” necessarily must exclude the “third-party second media server.” See supra § III.C. Nonetheless, the third-party second media server still must be separate and distinct from the “one or more computers programmed to implement [the recited] method,” lest the modifier “third-party” be rendered meaningless.” slip op. at 54

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “Further, Patent Owner did not present Mr. Sherwood as an expert on patent law or claim drafting, and we decline to give substantial weight to his testimony on this issue that is ultimately a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (ruling that the interpretation of patent claims is a matter of law to be determined exclusively by the courts). Still further, Petitioner’s counsel conceded that the formatting of the claim is not dispositive. Tr. 14:14–18.” slip op. at 26

  Patent outcomesUS 8,200,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Markman · KSR · Graham
  Patents in suitUS 8,200,822
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; 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 is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036
• Ocado Group PLC v. Autostore Technology AsNo claims unpatentable
  PTAB · Jun 27, 2022 · IPR2021-00311 · APJ Alyssa A Finamore · IPR · Final written decision

  Claims 1–4 and 11–15 were not shown unpatentable because Petitioner did not establish that the claimed motor control electronics location would have been obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor’s degree in mechanical engineering, and at least two to three years of experience working in the field of the design of robotic vehicles for material handling systems.” Pet. 15 (quoting Ex. 1015 ¶ 71). “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art.” PO Resp. 3. In this Final Written Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. We find, on the complete trial record, that this definition is consistent with the level of ordinary skill reflected in the asserted references and the ’140 patent.” slip op. at 15

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

    “In view of the issues in this inter partes review and the parties’ acquiesces to certain constructions, the parties acknowledge there are no claim construction issues. See Tr. 8:25–9:1 (Petitioner contending “[t]here are, I believe, no additional or remaining claim construction issues”), 34:6–8 (Patent Owner asserting “[a]s acknowledged by the Petitioner, there are no claim construction issues which need to be resolved by this Panel”). We similarly determine that no claim term requires an express construction for us to ascertain whether Petitioner has shown the challenged claims to be unpatentable.” slip op. at 17

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “for locating the motor control electronics on the robot and that each choice would have been obvious to try. Ex. 1015 ¶ 122; Ex. 1036 ¶¶ 27–32. The Supreme Court set forth the standard for when a combination may be obvious to try: “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421 (emphasis added). Furthermore, under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). For the reasons that follow, Dr. Pfeifer’s obvious-to-try testimony is unpersuasive and lacking factual support. Dr. Pfeifer testifies that WO/055 specifically discloses the power components, control components, and drive components should be located in proximity to one another. Ex. 1036 ¶ 27 (citing Ex. 1003, 6:12–14, 20–29, 11:31–34, 12:16–18). Dr. Pfeifer also testifies that, in the in-wheel motor embodiment shown in Figure 17, WO/055 discloses batteries, i.e., power components, located within side walls 262 of lower part 264 of the housing next to the motors. Id. ¶ 28 (Ex. 1003, 14:31–38). According to Dr. Pfeifer, “given WO/055’s teaching that [motor control electronics] should be located near the drive motors and batteries, . . . placing the [motor control electronics] entirely in the volume between the wheels of each rolling set— in close proximity to the in-wheel drive motors and batteries—would have been obvious to try.” Id.” slip op. at 23

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

    “Ex. 1015 ¶ 122 (emphasis added). As we explained in the Decision at institution, however, the location of the battery, i.e., within side walls 262 of lower part 264 of housing 254, does not include the volume between the wheels, as Dr. Pfeifer testifies, because, as shown in Figure 17, wheels 256 are outside of side walls 262. Dec. 26–27. Thus, WO/055’s disclosure of placing the battery within the side walls of the lower part of the housing to reduce the size of the robot and lower the center gravity does not persuasively explain why a POSITA would have placed the motor control electronics within the volume between the wheels.” slip op. at 23

  Patent outcomesUS 10,474,140 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,474,140

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.