- Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentablePTAB · Oct 13, 2026 · IPR2025-00710 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–7, 9, 13, and 16–20 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 8 was not shown unpatentable under either ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’294 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner indicates that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction. Thus, no express construction is required.” Pet. 13 (citing Ex. 1003 ¶ 86). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“and reliance on Figure 19 do not in any way explain how updating game costs by meter 502 with a new Cost_Table is relevant to a credit multiplier or even a multiplier being varied over time. Ex. 1003 ¶ 155. Considering this evidence, we determine that Petitioner and Mr. Crevelt’s reliance mainly on snippets from Schneier’s “Updating Cost Information protocol” embodiment does not sufficiently explain why or how a person of ordinary skill in the art would have understood updating game cost to encompass varying a multiplier of credits over time. We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004:158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to persuasive evidence in Schneier as to how or why a person of ordinary skill in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 8.” slip op. at 20
Patent outcomesUS 10,825,294 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,825,294 - Activision Blizzard, Inc. v. Milestone Entertainment, LLCSome claims unpatentablePTAB · Oct 13, 2026 · IPR2025-00709 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, 4, 6, 8, 10, 14–18, 21–23, 25, 27, and 29 are unpatentable as obvious over Schneier and over Schneier with Okita; claim 9 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states it “does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue.” PO Resp. 4. Patent Owner states further that “this [Patent Owner Response] and supporting declarations apply Petitioner’s proposed level of skill.” Id. On this record, Petitioner’s proposed level of ordinary skill in the art is not contradicted and is consistent with the technology and descriptions in the ’635 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner indicated in the Petition that “[t]his Petition establishes that the prior art meets each of the claim limitations under any reasonable construction.[] Thus, no express construction is required.” Pet. 12–13 (citing Ex. 1003 ¶ 85). In its Response, Patent Owner indicates that no constructions are necessary “because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” PO Resp. 4–5. Because there is no dispute between the parties as to any particular claim term and because the claims, as a whole, are reasonably clear on their face, no specific claim construction is necessary in this proceeding.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We also note that during his deposition, Mr. Crevelt was given opportunity to clarify his testimony as to Figure 19 and explain the cost updating embodiment in Schneier, and mostly demurred. See Ex. 2004, 158:4–182:6. Explaining his reliance on Figure 19, Mr. Crevelt stated: A: And whatever latest price from that updated cost information coming from the central site is -- is variable, it’s variable as time proceed[s]. It’s a – it’s a, much of a complicated section, and -- but the information is in the Schneier patent and shows that it could have -- it should change over time. Id. at 158:23–159:5. Mr. Crevelt further stated that: A: . . . for a metered play where you’re buying so much time or so many credits or so many games on a specific game and when it runs out, then have you to buy more, and that variable can change over time. Id. at 161:2–6. These explanations are unpersuasive because the testimony relates Schneier’s “updated cost,” with the claimed “multiplier” and “variable,” and does not adequately explain how they are equivalent or interconnected. See, e.g., id. at 160:16–23 (Mr. Crevelt testifying that “we can go from the description of figure 19, which starts at basically the top of column 56 in the Schneier patent, and . . . describes this process in detail of how the information is transferred from one place to the other and updated.”). Mr. Crevelt concludes that Schneier’s description is “complicated,” and from Figure 19 asserts the cost somehow includes a credit multiplier that “could” or “should” change over time. Id. at 158:23– 159:5. Overall, this testimony fails to sufficiently explain or point to in the art would have understood that the Figure 19 cost updating embodiment discloses a time-variable multiplier as required in claim 9.” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Discount Credit Pricing Structure The $0.20 discount described by Schneier for purchasing 20 credits, rather than 10 credits, does not have a temporal component. Ex. 1008, 63:31–34. Rather, it describes an option for the user or player to obtain a discount at a particular point in time if the player is willing to purchase 20 rather than 10 credits. Id. Petitioner’s citations to this embodiment do not address the idea of a time component, i.e., “over time,” as required by claim 9. Pet. 31; Pet. Reply 3–7 (citing Ex. 1008, 63:31–34). In this embodiment the $0.30 and $0.50 multipliers are constant, and the user is simply choosing between two existing options at a particular time to potentially take advantage of a $0.20 discount on credits. Comparatively, the $0.30 and $0.50 multipliers are different, but they are not “variable over time,” as required by claim 9. Ex. 1001, 47:38–40.” slip op. at 18
Patent outcomesUS 10,650,635 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,650,635 - PTAB · Oct 6, 2026 · IPR2025-00530 · APJ Scott C Moore · IPR · Final written decision
Original claims 1–9 were canceled; the non-contingent motion to add substitute claims 10–18 was denied for lack of written-description support, and claim 18 was also indefinite.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“that either the ’303 application or the ’838 provisional contain adequate written description support for the disputed feature of limitation [10.d]. Though the disclosures cited by Patent Owner indicate that a secondary identifier can be used to aid in verification of a UAV, these disclosures also make clear that both first and second identifiers are transmitted by and received from the UAV. See, e.g., Ex. 2002, 4:15–17, 30:24–31:6; Ex. 2003 ¶¶ 14, 66. Patent Owner’s reliance on disclosure characterized as transmitting an identifier from a remote computing system “through the UAV” (Reply 2) is not persuasive. The cited disclosures from the ’303 application and ’838 provisional generally disclose that the identifiers transmitted by a UAV can be “generated remotely,” such as by a “remote computing system.” Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45. But Patent Owner has not identified disclosure indicating that a remote computing system may transmit an identifier to the identification receiver. In the ’303 application and ’838 provisional, only the UAV (which is part of the discrimination system, and thus not “remote”) actually transmits identifiers to the identification receiver. Patent Owner is correct in its assertion that an “aerial system identifier can be generated on-board the aerial system” or “generated remotely . . . at a remote computing system.” Mot. 7 (citing Ex. 2002, 14:23–15:2; Ex. 2003 ¶ 45). But even if a UAV’s identifier was at some time in the past generated by a remote computing system, the subsequent transmission of that identifier from the UAV to the identification receiver would not satisfy the plain language of limitation [10.d]. The claim language “receive … a second identifier from a computing system that is remote to the discrimination system” requires the receipt of a transmission of the second identifier from a remote computing system. This claim language limits the source of the received transmission (i.e., where the particular transmission is “receive[d] … from”). Thus, the relevant issue is from where was the recited second identifier received. The relevant is not where the second identifier was originally generated.” slip op. at 12
- Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteIndefiniteMixed
“We determine that the disputed language in limitation [10.d] is not indefinite. There is no recitation in proposed substitute claim 10 that the second identifier is transmitted solely from the identifier transmission system. Thus, the alleged irreconcilable contradiction cited by Petitioner is not recited in the claims. Petitioner’s position appears to rest on the fact that the ’303 application and ’838 provisional do not disclose receiving the second identifier from a remote computing system. See Sur-reply 6 (“To manufacture written description support, [Patent Owner] argues the claim encompasses identifiers routed ‘through the UAV.’”). Though we agree that limitation [10.d] lacks adequate written description support, this defect does not render the claim indefinite because the scope of limitation [10.d] is otherwise reasonably certain based on its plain language. See supra § III.C.4.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date, deniedDecided for patent owner
“In contrast, the ’393 provisional never discloses that the described drone defense system may use the identity of a detected drone to develop a particular countermeasure. The disclosed RTSS certainly uses identity information to determine whether a drone is a threat. And if a threat is identified, the RTSS immediately starts “a series of processes … to determine what rule of engagement will be applied on the intruding drone.” Ex. 1006 ¶ 10. The ’393 provisional discloses that the system may select a particular countermeasure based on (i) the particular zone within a protected area within which a drone is located, (ii) “the behavior of the hostile drone,” or (iii) “other instructions.” Id. ¶¶ 9, 10. But the ’393 provisional never discloses that these “other instructions” may include the identity of the drone. The system disclosed in the ’393 provisional uses the identity of a drone to determine whether to activate the countermeasure system. See id. ¶¶ 16–18. But there is no disclosure in the ’393 provisional that the countermeasure system, once activated, uses the identity of the drone to develop the particular countermeasure to be employed. See generally Ex. 1006. Thus, though the Whitmarsh reference itself contains ample written description support for limitation [19e], the earlier-filed ’393 provisional does not. On this record, and having reviewed the ’393 provisional in its entirety, we determine that the ’393 provisional does not “reasonably convey[] to those skilled in the art that the inventor had possession of” the subject matter of limitation [19e] of Whitmarsh’s claim 19 “as of the filing date” of the ’393 provisional. See Ariad, 598 F.3d at 1351.” slip op. at 27
§ 102 anticipation§ 112 disclosurecites NautilusPatents in suitUS 10,249,199 - Sonos, Inc. v. Google LLCSome claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00806 · APJ Kevin F Turner · IPR · Final written decision
Claims 1–3, 5, 9–12, and 15–18 are unpatentable as obvious over either Roberts and Asokan or Suumäki; claims 6–8 and 19 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Schmidt’s testimony, has proposed that a person of ordinary skill in the art at the time of the invention “would have had a degree in computer engineering, computer science, or a similar discipline, along with 2 years of professional experience in the fields of networking and network-based systems or applications, or an equivalent level of skill, knowledge, and experience,” and would have been “aware of and generally knowledgeable about how devices were provisioned onto wireless networks, along with standards applicable to well-known methods for communication such as Wi-Fi, Bluetooth, and NFC available at the time the ’615 patent was filed.” Pet. 18 (citing Ex. 1003 ¶¶ 37–39). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally PO Resp.; PO Sur-reply. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Institution Decision, we considered the assertions of Petitioner that the terms of the ’615 patent’s claims do not require further construction and can be afforded their plain and ordinary meaning. Dec. to Inst. 7 (citing Pet. 14; Ex. 1003 ¶¶ 79–82). Patent Owner also does not assert any express constructions. See generally PO Resp.; PO Sur-reply. Given the lack of controversy, we need not explicitly adopt or discuss any explicit constructions in this decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 9
- BurdenMixed
“that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner’s argument. Although Petitioner is correct that Roberts discloses different embodiments for conveying configuration information, those embodiments are distinct. See Ex. 1004, that the section of the Petition discussing claim 6 does not discuss the combination of embodiments; it merely asserts what would have been obvious in the context of the cited embodiment. See Pet. 36–37. See, e.g., In re Stepan Co., 868 F.3d 1342 (Fed. Cir. 2017), headnote 4, “Whether a rejection of a patent claim for obviousness is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” See also, Intuit Inc. v. Samesurf, Inc., No. IPR2023-00342, 2024 WL 3165359, at *31 (P.T.A.B. June 25, 2024) (Distinguishing Stephan for simultaneous actions). Claim 6 depends on claim 1, and any discussion of claim 6, explaining its obviousness, must consider the obviousness case for the independent claim in its analysis. Petitioner’s observation that Roberts is agnostic as to how network configuration information is conveyed does not relieve Petitioner of the requirement of making that case in the Petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4).” slip op. at 20
Patent outcomesUS 11,050,615 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,050,615 - ZF North America, Inc. / ZF Active Safety US Inc. v. Stoneridge Control Devices, Inc.All claims unpatentablePTAB · Jun 12, 2024 · IPR2023-00273 · APJ Scott C Moore · IPR · Final written decision
Claims 5, 7, 8, 14–19, 24, and 25 are unpatentable under §103 over the grounds decided; the motion to exclude was denied in part and dismissed in part.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties agree that one skilled in the relevant art would have had a bachelor’s degree in a relevant engineering discipline, plus at least two years of experience with what each believes to be the relevant technology. Though Patent Owner objects to explicitly listing a bachelor’s degree in electrical engineering as a qualifying educational background, its proposed formulation includes open-ended language (i.e., “or a similar discipline”) that is broad enough to encompass electrical engineering degrees. Patent Owner also concedes that Dr. Lequesne, who has a bachelor’s degree in electrical engineering, is qualified to give testimony from the perspective of one of ordinary skill in the art. See Hrg. Tr. 36:9–21. Accordingly, it does not appear that there is a substantive dispute regarding the educational requirements that is relevant to this proceeding. As to the necessary experience, Petitioner correctly points out that “most” claims of the ’415 Patent do not recite isolators or require attenuation or damping. Pet. Reply 23. However, the challenged independent claims (claims 5, 8, 16, and 17) all recite at least an isolator with a damping coefficient, and the ’415 Patent repeatedly mentions noise attenuation as being a goal of the claimed invention. See, e.g., Ex. 1001, 1:53–55, 5:33– 56. Patent Owner’s proposal also uses the disjunctive “or,” and thus is broad one or more of vibration isolation, vibration damping, or noise attenuation. On this record, we adopt Patent Owner’s proposal, and determine that one of ordinary skill in the art to which the ’415 Patent pertains would have had a bachelor’s degree (or equivalent) in mechanical engineering, automotive engineering, or a similar discipline, and at least two years of experience with vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems. We find that this formulation is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355. We note, however, that none of the issues in this case appears to turn on differences between the parties’ proposed formulations, and that all of the findings and conclusions set forth below would have remained the same had we instead adopted Petitioner’s proposed formulation. C.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner
“We begin our analysis of this dispute by looking at the language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In so doing, we note that Patent Owner is correct in asserting that certain claims recite a vibration isolator disposed between a sub-frame and an actuator housing. See Ex. 1001, Claims 16, 17; PO Resp. 17. Other challenged claims, however, do not contain any limitations that pertain to an actuator housing. See Ex. 1001, claims 5, 7, 8. Patent Owner’s proposed construction, thus, would incorporate new limitations pertaining to an actuator housing into at least claims 5, 7, and 8. Next, we turn to the specification. See Vitronics, 90 F.3d at 1582. In so doing, we note that it is generally improper to incorporate limitations from the specification into the claims because 35 U.S.C. § 112 “requires that the claims themselves set forth the limits of the patent grant, [and] also definitions of terms to the exact representations depicted in the embodiments.” Phillips, 415 F.3d at 1323. There are, of course, exceptions. A specification may contain a “special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). But any such special definition must “clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (quoting Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)). The specification also may “reveal an intentional disclaimer, or disavowal of claim scope by the inventor.” Phillips, 415. F.3d at 1316. But any such disclaimer “must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006). Patent Owner is correct in its assertion that the specific embodiments disclosed in the ’415 Patent specification have separate sub-frames and actuator housings. See PO Resp. 16–17 (citing Ex. 1001, 4:44–54, 6:36–54). But the specification also makes clear that the applicant intended for these embodiments not to be construed as limiting the scope of the claims. See Ex. 1001, 8:36–42 (clarifying that the disclosed embodiments “are set forth here by way of illustration but not of limitation”). Patent Owner identifies nothing in the specification that rises to level of a definition or clear and intentional disclaimer or disavowal of claim scope, and we see no such definition or disclaimer in the specification. Patent Owner’s reliance on In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017), is also misplaced. In re broadest reasonable interpretation standard—a standard that does not apply in this case. See id. at 1381–82. Moreover, the claim construction at issue in Smith was so broad that the Federal Circuit characterized it as “generic.” See id. at 1382. Here, the parties agree that the claim term sub-frame has a specific meaning: a frame for a sub-assembly. See PO Resp. 16; Pet. Reply 13; Hrg. Tr. 13:7–12. Nothing in Smith requires or suggests that under the Phillips standard, we must interpret the non-generic claim term “sub-frame” in a way that would incorporate new limitations pertaining to an actuator housing into claims that do not even mention an actuator housing.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We decline to find Dr. Lequesne less credible based solely on his electrical engineering degree and relative level of experience with noise vibration and damping. As noted above, Patent Owner does not dispute that Dr. Lequesne is qualified to give testimony from the perspective of one of ordinary skill in the art. Petitioner asserts, and Patent Owner does not dispute, that “Dr. Lequesne has spent his 40-year career as a designer in the automotive industry, has worked on EPBA [electronic parking brake actuators and NVH [noise, vibration, and harshness].” Pet. Reply 24 (citing Ex. 1002 ¶¶ 7–9; Ex. 2007, 10:6–17, 11:21–16:3, 20:3–31:8; Ex. 1023). On this record, we find Dr. Lequesne qualified to provide expert testimony on the subject matter of the challenged claims of the ’415 Patent and asserted prior art references because he has a degree in electrical engineering, which is a “similar discipline,” and at least two years of experience with “vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems.” See supra § III.B; Ex. 1002 ¶¶ 4–12 (outlining Dr. Lequesne’s education and experience); Hrg. Tr. 36:9– 21 (Patent Owner’s counsel conceding that Dr. Lequesne is qualified to provide expert testimony). In judging the credibility of competing witnesses, we have weighed their testimony, taking into account the witnesses’ different educational qualifications and experiential backgrounds as they pertain to the ’415 Patent, as well as whether the witnesses offer corroboration for their opinions, and whether those opinions are consistent with the ’415 Patent, the prior art, and their cross-examination testimony. E.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We agree with Petitioner that Patent Owner’s purported evidence of copying, industry praise, and commercial success lacks nexus to the claimed invention. To show that the accused devices at issue, i.e., the purportedly copied, praised, and commercially successful products sold be Petitioner, are coextensive with at least one independent claim of the ’415 Patent, Patent Owner relies on the claim charts shown in Exhibit 2016. PO Resp. 62; Ex. 2005 ¶¶ 163–166. Patent Owner identifies those charts as “Exhibits A and B from Patent Owner’s Infringement Contentions, served in Stoneridge Control Devices, Inc. v. ZF North America, Inc. et al., U.S. District Court for the Eastern District of Michigan, Case No. 2:22cv10289.” Id. at viii. As such, the claim charts are apparently attorney argument summarizing Patent Owner’s allegations in the district court, not substantive evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Patent Owner’s attempt to challenged claims also constitutes an improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); PTAB Consolidated Trial Practice Guide 35–36; Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014) (informative). Moreover, Dr. Stein’s declaration lacks any explanation or analysis to support his belief that “there is a component in each of the photographed products” in the claim charts “that corresponds to each one of the claim elements,” his “overall agreement with the positions taken in the claim charts,” or his “understand[ing]” that the accused devices “in Ex. 2016 are co-extensive in scope with the ’415 Patent.” Ex. 2005 ¶¶ 163, 166. Dr. Stein’s declaration merely repeats, in conclusory fashion, that there is a nexus between the accused devices and the claimed invention, and is thus insufficient to establish a nexus. See Bosch Auto. Serv. Sol., LLC v. Matal, 878 F.3d 1027, 1037 (Fed. Cir. 2017) (“As the Board recognized, however, the Pierce declaration lacks any explanation or analysis to support his asserted ‘understand[ing]’ that these commercial reset tools are covered by, or coextensive with, the claims of the ’796 patent. The Board permissibly concluded that this conclusory testimony lacks foundation.”); In re Cree, Inc., 818 F.3d 694, 703–04 (Fed. Cir. 2016) (“We agree with the Board that Dr. Brandes’ declaration merely repeats, in conclusory fashion, that there is a nexus between the success of white LEDs and the claimed invention.”). Patent Owner has thus failed to make a sufficient showing to establish a presumption of nexus. its secondary considerations evidence is a direct result of the unique characteristics of the claimed invention. For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing copying, industry praise, and commercial success is entitled to little weight in our obviousness analysis because Patent Owner has not shown a sufficient nexus between the evidence presented and the invention claimed in any of the challenged claims. F.” slip op. at 17
Patent outcomesUS 7,021,415 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,021,415 - Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentablePTAB · Mar 12, 2024 · IPR2022-01397 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–12 are unpatentable under § 103 over Willis and Xing, with claim 8 also unpatentable over Willis, Xing, and Laux; claim 13 was not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the arguments presented and the cited references, we find Petitioner’s unopposed definition of the level of ordinary skill reasonable, supported by the prior art evidence, the Specification, and Dr. Stein’s Declaration testimony (Ex. 1003 ¶¶ 21–24), and, for purposes of this Decision, adopt it as our own.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner asserts that “it was known that implementing a variable transmission in a milling machine could improve fuel efficiency” (id. at 33–34), and relying on the declaration testimony of Dr. Stein, reasons that one of ordinary skill in the art “would have recognized that using a hydromechanical CVT permitted controlling an engine to a speed that minimizes fuel consumption for a given load while controlling transmission gear ratios to achieve desired transmission output speeds that maximize machine performance.” Id. at 34 (citing Ex. 1003 ¶ 66). Petitioner further asserts that Xing taught a method of controllably adjusting a CVT to further improve fuel efficiency without impacting machine performance. Supra [Pet. 18–24]. Thus, implementing a CVT and control method like that taught by Xing in Willis’s milling machine would have been a matter of combining prior art elements according to known methods to yield predictable results. Id. (citing Ex. 1003 ¶ 66). Relying on the declaration testimony of Dr. Stein, Petitioner takes the position that one of ordinary skill in the art “would have expected to successfully incorporate Xing’s teachings, including those related to CVTs, engines, transmission control algorithms, and associated sensors, into Willis’s milling machine” because it would have been no more that the combination of “prior art elements according to known methods to yield predictable results.” Pet. 34 (citing Ex. 1003 ¶¶ 65–66); see also id. at 34–35 (“This combination would further apply a known technique and hardware to a known device that was ready for improvement, predictably yielding the result of the expected improvement.”). Petitioner concludes that one of ordinary skill in the art “would have expected that such a combination would improve the fuel consumption and energy efficiency of Willis’s milling machine, while maintaining desired rotor speed during operation.” Id. at 35. We find, on the complete trial record, that a person having ordinary” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that the combination of Willis and Xing teaches or suggests “determining an engine load of the engine” and “adjusting an engine speed of the engine based on the engine load” as recited by limitation 1[b], and recited in part by limitation 1[c]. Petitioner explains that Xing’s controller 116 “receive[s] signals from sensors communicatively coupled to the controller, such as torque sensor 122 and engine speed sensor 124” (Pet. 45 (citing Ex. 1006, 8:16–40)), and [b]ased on those signals, the controller in Xing evaluated power losses from the transmission and other power consuming components at different candidate operating speeds, measured engine load to determine the work output demanded of the machine, and independently set engine speeds and transmission ratios to minimize fuel consumption while achieving desired performance. Id. at 46 (citing Ex. 1006, 8:67–9:3, 9:9–17). We find Petitioner’s explanation to be consistent with Xing’s disclosure that the current load power requirement for the work vehicle may be determined indirectly by calculating the current engine power (Pengine) and the current power loss (Ploss) for the work vehicle 10. For example, as indicated above, the controller 116 may be configured to continuously monitor the engine speed and the engine torque (via sensors 122, 124), thereby allowing for the current engine power to be calculated by the controller 116. Ex. 1006, 9:37–44; see also id at 9:27–31 (“The relationship between the load power requirement and the power produced by the engine 22 of the work vehicle 10 is provided” by Equation 1: “Pengine = Pload + Ploss.”).” slip op. at 34
Patent outcomesUS 9,975,538 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,975,538 - Wirtgen America, Inc. v. Caterpillar Inc.Some claims unpatentablePTAB · Mar 5, 2024 · IPR2022-01394 · APJ James J Mayberry · IPR · Final written decision
Claims 18, 21–29, and 31–35 are unpatentable over the stated § 103 grounds; claims 30, 45, and 49–63 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having ordinary skill in the art “in the technical field of the ’995 patent (mobile construction machines) would have had knowledge of the technical literature concerning machine design, including hydraulic and mechanical systems and their use to steer and position wheels or tracks, before July 2004.” Pet. 15 (referencing Ex. 1003 ¶¶ 35–36). Petitioner further contends that a person having ordinary skill in the art would typically have had: (i) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on mobile construction machine design (or in a similar field); or (ii) seven years of experience working on mobile construction machine design (or in a similar field). Id. (referencing Ex. 1003 ¶¶ 35–36). Patent Owner does not address the level of ordinary skill in the art in its Response. Dr. Klopp states that “[w]hile I do not opine on the correctness of [Petitioner’s] description [of the level of ordinary skill], I apply [Petitioner’s] description of a person of ordinary skill in the art for the purposes of my declaration.” Ex. 2004 ¶ 26. Based on the prior art, the sophistication of the technology at issue, and Mr. Orr’s Declaration testimony, we adopt Petitioner’s undisputed definition of the level of ordinary skill. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’995 patent. Ex. 1003 ¶¶ 35–36; Ex. 1001 (describing a mobile construction machine); Exs. 1005–1015 (disclosing aspects of mobile construction machine design).” slip op. at 24
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Independent claim 45 uses “means-plus-function” language, reciting several such clauses. Ex. 1001, 14:31–50; see 35 U.S.C. § 112 ¶ 6.10 10 We cite to the pre-AIA version of the statute applicable to the Challenged Claims. Means-plus-function claiming occurs when a claim term is drafted in a manner that invokes 35 U.S.C. § 112 ¶ 6, which states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. See 35 U.S.C. § 112 ¶ 6; Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015) (en banc). The parties do not dispute that § 112 ¶ 6 applies to the recited means-plus-function clauses in the Challenged Claims. See Pet. 16–20; PO Resp. 5–6 (implying that § 112 ¶ 6 applies in arguing that Petitioner did not satisfy the requirements for construing certain means-plus-function terms).” slip op. at 25
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner
“Turning to the corresponding structure, the Specification of the ’995 patent identifies only one structure that performs the recited function— actuator 44. The Specification states that “second actuator 44 is associated with the support device 40 and is adapted to maintain the same rotational direction of the one ground engaging unit 20 in each of the projecting and retracted positions.” Ex. 1001, 4:44–47; see id. at 4:56–60 (“[S]econd actuator 44 is connected to the lifting column 46 and is adapted to cause at least a portion of the lifting column 46 to rotate about a lifting column axis 48 that is oriented generally vertically relative to the work machine.”). The Specification at least suggests that actuator 44 does not need to be a rotary actuator, or, at least, that a linear actuator is an equivalent structure to a rotary actuator. For example, in describing “one of the preferred embodiments,” the Specification describes that “at least one of the first and second actuators 42, 44 is a rotary actuator,” suggesting that actuator 44 is not necessarily a rotary actuator. Ex. 1001, 4:61–62; see also id. at 5:17–21 (“These embodiments may be advantageously combined by employing a rotary actuator as described above as either or both of the first and second actuators 42, 44, and by positioning these actuators at the specified longitudinally spaced apart locations.”), 5:21–24 (“[I]t may also be preferable that at least the second actuator 44 be implemented using the rotary actuator construction and placed at the upper portion of the lifting column 46.” (emphasis added)); but see id. at Fig. 3 (depicting actuator 42 as a linear actuator). Accordingly, we find that the corresponding structure identified in the Specification for the recited function is a rotary or linear actuator. As such, we do not agree with Petitioner’s construction limiting the actuator to a rotary actuator. We also do not agree with Petitioner that the second actuator must be at the top portion of the lifting column. The Specification clearly identifies that the second actuator may be located “on the lifting column” “spaced apart from the first actuator 42,” and that locating the second actuator at the upper portion of the lifting column is merely a preferred location. See Ex. 1001, 5:8–24.” slip op. at 29
- Strike new argumentNew argument disregardedDecided for patent owner
“evidence, that a person having ordinary skill in the art would have modified Piccoli’s teachings to connect the second end of the first actuator to the swing arm as required by claim 30. In the Petition, the only evidence to support its modification is conclusory testimony from Mr. Orr. This testimony is accorded no weight. See Xerox Corp., IPR2022-00624, Paper 9. With respect to Petitioner’s reliance on Dubay as state-of-the-art evidence (for the first time in the Reply), we agree with Patent Owner that this argument is an improper new argument. In determining whether an argument is a proper argument in reply, we look to see if the Reply argument is responsive to an argument from Patent Owner and expands on a position in the Petition. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023) (“[W]e have held that a reply may be proper if it is responsive and simply expands on previously raised arguments.”). Or, if Petitioner relies on previously unidentified disclosure “to make a meaningfully distinct contention.” Id. at 1383 (“[W]e held that a petitioner who asserted in its reply previously unidentified prior-art disclosures ‘to make a meaningfully distinct contention’ was impermissibly raising a new theory of unpatentability.”). We find that Petitioner’s argument in reply is closer to the later situation. Here Petitioner does not expand on a position from the Petition that Patent Owner criticizes based on the merits of the contentions. Instead, Petitioner supplements it contentions by arguing that the linear actuator does not have to be attached to the lifting column to retract and extend Volpe’s leg assembly, and by citing to Dubay when Patent Owner argues that Petitioner provides no supporting evidence for its contentions. These responses are the type of “meaningfully distinct contention[s]” that signal that Petitioner is augmenting deficient contentions in the Petition with new arguments.” slip op. at 61
Patent outcomesUS 7,523,995 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,523,995 - Caterpillar Inc. v. Wirtgen America, Inc.All claims unpatentablePTAB · Jan 29, 2024 · IPR2022-01277 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over OMM and Samuelson because the combination was supported by motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Singhose repeats Petitioner’s conclusions without any additional facts, data, or analysis to support his “opinion.” 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.”). “Patent Owner does not dispute the Petition’s definition.” PO Resp. 25. For purposes of this Decision, based on the prior art, the sophistication of the technology disclosed in the ’391 patent, and giving little weight to Dr. Singhose’s opinion, we adopt Petitioner’s definition of the level of ordinary skill.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“’391 patent because they are from the same field of endeavor and are reasonably pertinent to the problem the ’391 patent was trying to solve.” Pet. 16. The ’391 patent relates to “a road milling machine.” Ex. 1001, Abstract. The PM-465 machine described in OMM is a road-milling machine. Ex. 1002, 2. Samuelson discloses a sensor-integrated cylinder for use “in mobile equipment,” including construction equipment. Ex. 1004, 1:35–63, 2:28–31; Ex. 1006 ¶ 63. Additionally, the designs in the ’391 patent, OMM, and Samuelson address a similar problem—measuring the precise location of various components on construction equipment. OMM describes a sensor-driven control system intended to increase the accuracy of milling cuts. E.g., see, Ex. 1002, 50 (“Sensors at either side of the machine can be positioned in various ways for a variety of conditions to control both the grade and slope[10] of the cut surface.”). The sensors “detect and follow a string line, curb, etc., and the electronic control system makes adjustments to the heights of the legs to control the grade and slope of the cut surface.” Id. The sensor-integrated cylinders in Samuelson accurately measure the linear position of the piston as it extends/retracts inside the cylinder, and this information is sent to the controller for processing. Ex. 1004, 4:17-47. According to Petitioner, a person of ordinary skill “would have been motivated to implement sensor-integrated cylinders like Samuelson’s on the PM-465 machine and use them to monitor and change the positions of components attached to those cylinders.” Pet. 17 (citing Ex. 1006 ¶¶ 64–65).” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In summary, we determine, on the complete trial record, that Petitioner has provided sufficient reasoning, supported by a preponderance of the evidence, that a person having ordinary skill in the art would have been motivated to modify OMM’s hydraulic cylinders with Samuelson’s smart cylinders, and use OMM’s side plates as grade slope sensors. We also find, based on the analysis above, that Petitioner has proven, by a preponderance of the evidence, that a person having ordinary skill in the art would have had a reasonable expectation of success.” slip op. at 45
Patent outcomesUS 9,879,391 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,879,391 - PTAB · Mar 10, 2023 · IPR2022-01395 · APJ James J Mayberry · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood of success on at least one claim; it found Petitioner’s showing deficient for claims depending from claim 45.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the current record, we institute an inter partes review.” slip op. at 2
- BurdenMixed
“3. Independent Claim 45 – Means-Plus-Function limitations As we discuss above in connection with our claim construction analysis, we agree with Patent Owner’s argument that Petitioner’s treatment of the means-plus-function claim limitations of independent claim 45 is deficient. Petitioner fails to identify the specific structures associated with each means-plus-function term8. Accordingly, Petitioner cannot demonstrate that the prior art discloses the structure corresponding to each means-plus-function limitation, and, consequently, cannot demonstrate that independent claim 45 is unpatentable over the prior art.” slip op. at 43
- Parallel petitionsDecided for petitioner
“We determine that two petitions are appropriate in this case. We base our determination on the ambiguity in the prosecution history, where the Examiner seems to suggest that the second actuator must be a rotary actuator. See Ex. 1002, 280 (rejecting all of the pending independent claims and stating that Dubay10 (Ex. 1007, which the Examiner refers to as “Wo document ’117” or just “Wo document”) “discloses the invention substantially as claimed. However, Wo document lacks the second actuator being a rotary actuator” (emphasis added)). We also determine that instituting both petitions does not “place a substantial and unnecessary burden on the Board,” and Patent Owner does not argue that two petitions would place such a burden on Patent Owner. See CTPG 59.” slip op. at 47
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We find that neither the same or substantially the same art previously was presented to the Office nor the same or substantially the same arguments previously were presented to the Office. As an initial point, there is no dispute that Feliz was not before the Office. See Pet. 18 (“All the grounds rely on references never presented to the Office during prosecution and raise arguments never considered by the Office.”). The Examiner’s rejections during prosecution of the application that matured into the ’995 patent relied on Littman, which features a rotary actuator located just above the wheel at the lower part of its leg, to teach the second actuator. See Ex. 1002, 280–281; Ex. 2001, 4:13–32 (describing drive means 88), Figs. 1–5 (depicting drive means 88). The Petition relies on Feliz’s rotary actuator for the second actuator. Pet. 33–34. However, this is where the similarities between Feliz and Littman end. Feliz discloses an earth excavator with lifting columns. See Ex. 1012, 8:45–9:12; see also Pet. 26 (providing an annotated version of Feliz’s Figure 4, identifying a rotary actuator at the upper portion of a lifting column, over a ground engaging unit). In this way, Feliz is not cumulative of Littman. See Ex. 2001, 1:5–10 (describing Littman’s “prime mover,” which has “a plurality of elongated, segmented legs with individual steerable drive means on each so as to enable the prime mover to be easily moved to and positioned properly in a wide variety of environments and terrains”), Fig. 1 (showing the prime mover). The Examiner reasoned that a person having ordinary skill in the art would have looked to Littman’s rotary actuator as the second actuator. Ex. 1002, 280–281. The Applicant argued that Littman does not suggest spacing its rotary actuator apart from a first actuator or have a lifting column. In contrast, Petitioner directs us to express disclosures in Feliz of a lifting column and the second actuator positioned near the top of a lifting column, such that it is spaced apart in the vertical direction from Bitelli’s first actuator. See Pet. 29, 35. As such, little overlap exists between the arguments made during prosecution and the arguments in the Petition. For the reasons discussed above, we find that Part One of the” slip op. at 51
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,523,995 - Siemens Industry Software Inc. v. Synopsys, Inc.Some claims unpatentablePTAB · Jan 11, 2023 · IPR2021-01215 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–5, 7, 8, 11–15, 17, 18, and 21–24 are unpatentable over Yoshimura-based grounds; claims 6, 9, 10, 16, 19, and 20 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Skill in the Art Petitioner offers an assessment as to the level of skill in the art as of the time the ’655 patent was filed. Pet. 9. For purposes of this proceeding, Petitioner and Petitioner’s declarant “adopt the [following] definition for the person of ordinary skill in the art”: “a Bachelor of Science degree in Electrical Engineering or Computer Engineering, and has either received academic credits for an ASIC design course or completed at least one year of work experience in the VLSI design, electronic design automation for VLSI, or ASIC design fields.” Id. at 9–10; Ex. 1003 ¶ 78 (Robins Declaration). Patent Owner applies the same definition. Resp. 5. To the extent necessary, we accept this definition because it is supported by the Robins Declaration and consistent with the ’655 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Although the phrase “separate from,” is not found in the claims, we look to the language of the claims, the description in the patent disclosure, and the prosecution history to determine what type of separateness is required by the claims. We start with the relied-upon Figure 4 of the ’655 patent, which illustrates a box labeled “Multi-Scenario ECO Database 426” that is near, but not overlapping with or surrounding, boxes labeled “Image 424” through “Image 422” and “Image 420.” Ex. 1001, Fig. 4. The ’655 patent also describes a storage device 408 as “storing scenario images 420– 424 that correspond to different scenarios,” and “can additionally store multi-scenario ECO database 426,” which “can include circuit information for multiple scenarios that can be used to estimate the impact of ECOs in multiple scenarios.” Ex. 1001, 5:9–11, 5:18–21.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“determin[e/ing . . . ] an ECO to fix one or more design requirement violations, wherein said determining includes identifying an ECO to fix a design requirement violation in the scenario and checking that ECO against at least some of the multiple scenarios by estimating parameter values based on parameter values stored in the scenario image and the multi-scenario ECO database. Resp. 10 (citing Ex. 2001, 21-24). In reviewing the term, the District Court explained that the multi- scenario ECO database “stores parameters and allows for a quick estimation of an ECO’s impact across multiple scenarios.” Ex. 2001, 19. The District Court further summarized the ’655 patent as describing that a scenario image is “[f]irst” loaded, and if there is a design requirement violation, an ECO is determined for that scenario, and then subsequent scenarios are loaded to check whether the ECO from the first scenario will create new, or exacerbate existing, design violations. Id. (citing Ex. 1001, 4:21–33). However, as recognized by the Court, the process at the cited section is described in the ’655 patent as an “approach [that] may take an impracticably long time to fix design requirement violations in multiple scenarios” due to the long time that is required to load a scenario image. Id. at 24; Ex. 1001, 4:43–47. The Court reasoned that in order to determine an ECO to fix a violation, “determine” must involve “identifying” a possible fix and “checking” whether that fix is suitable. Id. at 23. Thus, the District Court’s construction requires both identifying and checking as part of the claimed determining step. Id. at 23–24. We agree with the District Court’s reasoning, and apply their construction in this proceeding.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner assertion that Yoshimura’s estimation in step S5 is performed to check an identified ECO is supported by the record. In determining the change to be made (the ECO), Yoshimura uses estimated parameters for the third and fourth corner conditions, calculated in step S5 through the “Hold Margin” equation. Ex. 1007, 6:63–67. Those third and fourth corner conditions are then used to check potential layouts identified in step S6. Id. at 7:18–20 (“In step S6, the automatic EC device 16 searches for a layout that does not cause a timing error under any one of the first to fourth comer conditions from the analysis results of step S4 and step S5.”). In this manner, step S5 sets an initial third corner condition having estimated parameter values that is included, as the initial step, in checking an identified ECO at steps S6–S8. Thus, Yoshimura’s determination of a change to satisfy the corner conditions is, to use Dr. Edward’s phrase, “based on” its third and fourth corner conditions having parameters estimated in step S5. For this reason, we determine that Petitioner has sufficiently shown that Yoshimura discloses the claimed limitation.” slip op. at 20
Patent outcomesUS 8,407,655 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,407,655
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.