- Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentablePTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision
The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8
- Strike new argumentNew argument disregardedGranted in part
“Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31
Patent outcomesUS 11,968,909 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - Luxottica Of America Inc. v. E-Vision Smart Optics, Inc.Adverse judgmentPTAB · Mar 31, 2026 · IPR2025-00216 · APJ John D Hamann · IPR · Adverse judgment
The Board granted the Patent Owner’s request for adverse judgment after disclaimer of claims 1–20.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a] party may request judgment against itself at any time during a proceeding,” and that “[a]ctions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Such is the case here. Thus, we grant Patent Owner’s unopposed Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 11,487,138 - PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Dec 8, 2023 · IPR2022-01022 · APJ John D Hamann · IPR · Final written decision
Claims 15 and 18 are unpatentable as obvious over KR872; substitute claims 26 and 27 are unpatentable, and the contingent motion to amend is denied.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“Motion for Additional Discovery seeking information via an interrogatory to Patent Owner relating to indicia of non-obviousness. Paper 26.2 Patent Owner filed an Opposition to this motion. Paper 27. We granted Petitioner’s Motion for Additional Discovery, and ordered Patent Owner to respond to the interrogatory. Paper 57,3 12. Patent Owner filed its verified interrogatory response as Exhibit 2041. We also authorized the parties to file papers concerning the significance of the produced information. Paper 57, 12. Petitioner filed an Explanation of the Significance of Patent Owner’s” slip op. at 3
Patent outcomesUS 8,514,499 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,514,499 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jul 12, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–4, 6, and 9 after it disclaimed those claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–4, 6, and 9 of the ’397 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–4, 6, and 9, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2029, we determine that entry of judgment against Patent Owner with respect to claims 1–4, 6, and 9 of the ’397 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,564,397 - Motorola Mobility LLC v. Largan Precision Co., Ltd.Adverse judgmentPTAB · Jun 30, 2023 · IPR2022-01170 · APJ Norman H Beamer · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–2 and 6–10 after their disclaimer, and vacated all scheduled due dates.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“II. DISCUSSION A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Actions construed as a request for entry of adverse judgment include “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. Patent Owner has disclaimed, under 37 C.F.R. § 1.321(a), claims 1–2 and 6–10 of the ’487 patent, and explicitly requests that the Board enter adverse judgment against it with respect to claims 1–2 and 6–10, the only claims at issue in this trial. Ex. 3001. Based on Patent Owner’s communication, and our review of Exhibit 2024, we determine that entry of judgment against Patent Owner with respect to claims 1–2 and 6–10 of the ’487 patent is appropriate.” slip op. at 2
NonePatents in suitUS 10,209,487 - Apple Inc. v. MPH Technologies OYAdverse judgmentPTAB · May 11, 2023 · IPR2019-00820 · APJ John D Hamann · IPR · Adverse judgment
On remand, the Board entered adverse judgment against Patent Owner as to claim 4 based on its statutory disclaimer and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
- RemandOther
“We agree with Petitioner and determine that Patent Owner requested adverse judgment against itself by filing a statutory disclaimer for claim 4. Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for adverse judgment include . . . disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only claim 4 for this proceeding).” slip op. at 3
NonePatents in suitUS 7,937,581 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01601 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1 and 2 are unpatentable as obvious over both listed combinations; the contingent motion to amend is granted, replacing them with substitute claims 3 and 4.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated we would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner. Institution Dec. 19. We reasoned that our review of the ’199 patent and the cited prior art did not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’199 patent on more general principles of cellular communications and signaling. Id. at 19– 20. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and therefore, we concluded that our decision would be the same under either formulation. Id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“device associated with a driver at all.” PO Resp. 39 (citing Valenti III Decl. ¶ 94). Patent Owner continues, “Petitioner’s expert acknowledges that Lalancette does not disclose the use of a mobile communication device associated with the driver.” Id. (citing Williams Dep. 128:14–129:25, 132:1–8). This is a misrepresentation of Mr. Williams’s testimony. He was not asked whether Lalancette “discloses” a mobile communication device; he was asked to agree whether Lalancette “identi[fies] the mobile computer as a mobile communication device.” Williams Dep 129:10–13. He explained his response later in his testimony: “In the passage where [Lalancette] references mobile computer, it doesn’t have a specific form factor discussion such as referencing Smartphones.” Id. at 132:5–8. We do not agree with Patent Owner’s argument that this limitation is not met by Lalancette and we do not find the testimony of its expert, Dr. Valenti, credible or helpful. See Valenti III Decl. ¶¶ 94 (“Lalancette does not disclose a mobile device associated with a driver at all.”). As Petitioner points out, the argument supported by Dr. Valenti is an “attempt to improperly narrow the definition of a mobile device to only mean a smartphone of the driver.” Pet. Reply 24. We find that this argument and the supporting expert testimony are contradicted by the ’199 patent specification. See id, at 24–25 (quoting Ex. 1001, 3:10–11, defining mobile communication device broadly). We, therefore, find that the mobile computer disclosed in Lalancette meets the requirement of this claim limitation for a “mobile communication device associated with the driver.” We find for the reasons given that Petitioner demonstrates that Lalancette and Kemler meet limitation 1E.” slip op. at 45
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPlain and ordinary meaningDecided for petitioner
“We declined to adopt this implicit construction (and the related construction “actively generate”). Institution Dec. 23. The claims themselves do not require the controller to “actively formulate” a new indicator for the same rider requesting a subsequent trip for that second trip, or that “a new signal be actively formulated each time a ride is dispatched,” as Patent Owner’s analysis asserts. See infra. Nor is it clear how this construction is supported by the ’199 patent specification. The ’199 patent describes the controller as “communicatively coupled to the transceiver.” Ex. 1001, 2:10–11. Further, “[t]he controller is adapted to generate a first signal to be transmitted by the transceiver to a mobile communication device.” Id. at 2:12–14. Elsewhere in the patent, “controller” is defined as “any type of computing device, computational circuit, or any type of processor or processing circuit capable of executing a series of instructions that are stored in a memory associated with a with the controller.” Id. at 3:6–10. The operation of the controller is also described as follows: “The controller 110 may generate a first signal (also referred to herein as a ‘notification signal’) that is transmitted via the transceiver 120 to the mobile communication device 150 associated with the driver D.” Id. at 5:14–17. Still further, “[t]he controller 110 generates four different notification signals, NOTIFICATION-A, NOTIFICATION-B, NOTIFICATION-C, and NOTIFICATION-D, to be transmitted by the transceiver 120 to a first DRIVER'S MOBILE DEVICE 150A, a second DRIVER'S MOBILE DEVICE 150B, a third DRIVER'S MOBILE DEVICE 150C, and a fourth DRIVER'S MOBILE DEVICE 150D, respectively.” Id. at 6:39–46. And further, “[i]n other embodiments, wherein the vehicle identification system 11 is utilized, an indicatory signal to the rider's mobile communication device may be generated by the controller 110.” Id. at 7:4–7. In none of these descriptions of the controller’s operation is there” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–25. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-demand service system can also use location information from the driver’s device and/or transport information . . . to automatically determine the driver’s state or state of the transport service.” Id. at 22 (citing Ex. 1006 ¶¶ 29, 35). Petitioner explains that in Kalanick, “[w]hen a service application on the driver’s device determines that the transport service is to change state, such as to ‘arriving now,’ based on a determination that the driver is within a predetermined distance, the service application can trigger the indication device to output the user’s specific color.” Id. at 23 (citing Ex. 1006 ¶ 37). Thus, Kalanick’s system can “control the indication device to output the user’s color or other unique distinctive indicator based on the transport state.” Id. (citing Ex. 1006, ¶ 38). Petitioner explains that Kemler describes a central dispatching system in which one or more server computing devices of the centralized dispatching system may select a vehicle to be dispatched based upon the location of the client computing device. Id, (citing Ex. 1008, 10:3–33). Thus, Petitioner explains that Kemler, like Kalanick, “discloses ride-matching based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. Petitioner demonstrates that “a [person of ordinary skill] would find it obvious to modify Kalanick’s vehicle identification system in view of Kemler, at least because both systems disclose substantially similar ride-matching techniques based on proximity and distance to match requesting riders with drivers based at least in part on the proximity of their respective locations.” Id. at 23–24. Petitioner also explains that a person of ordinary skill would “anticipate success of such a modification.” Id. at 24. Petitioner explains that “the controller in Kalanick is already in communication with the car and could easily send a signal to activate the display with the unique code.” Id. (citing Williams I Decl. ¶ 121). Petitioner recognizes that although both Kalanick and Kemler “focus” slip op. at 28
Patent outcomesUS 10,559,199 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,559,199 - Lyft, Inc. v. Rideshare Displays, Inc.All claims unpatentablePTAB · Apr 10, 2023 · IPR2021-01598 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1–9 and 11–20 are unpatentable as obvious over either asserted combination; the motion to amend is granted for substitute claims 29, 31, and 32.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Prelim. Resp. 5. At the institution stage, we adopted Petitioner’s more general formulation, with a qualification. We stated “[w]e would also expect a person of ordinary skill to also have at least some experience in wireless cellular network protocols, as suggested by Patent Owner.” Institution Dec. 16. We reasoned that our review of the ’637 patent and the cited prior art does not suggest that specific experience with data privacy policies and protection models would be required, given the focus of the ’637 patent on more general principles of cellular communications and signaling. Id. However, we observed that the arguments presented by the parties did not depend on the definition of the person or ordinary skill, and, therefore, our decision would be the same under either formulation. Id. at 16–17.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 12–14. The fact that Kalanick may not “disclose any problem” arising from the possibility of two passengers in the same area having the same signal does not prove a problem did not exist or that a person of ordinary skill would not be motivated to improve upon the solution for it. See Pet. Reply 5–6. Similarly, we are not persuaded by Patent Owner’s argument that there would be no reasonable expectation of success based on Kemler’s disclosure of a server farm. PO Resp. 24 (“The immense expense and complexity of operating a server ‘farm’ would be a reason to avoid Kemler’s teachings.”). Testimony from Mr. Williams establishes the advantages of such systems. Pet. Reply 7 (citing Williams I Decl. ¶¶ 124); Williams Dep. 82:1–88:25, 92:13–93:1; Williams III Decl. ¶¶ 34–35.5” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that the Petition and supporting expert testimony sufficiently demonstrate that a person of ordinary skill would have combined the teachings of Kemler and Kalanick with a reasonable expectation of success. Pet. 21–27; Williams I Decl. ¶¶ 113–125; Williams III Decl. ¶¶ 5–17. In addition to the reasons given supra, Petitioner explains that Kalanick’s “on-” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“The ’637 patent describes an indicator as “a ‘code’ (e.g., a text string or an alphanumeric string), an icon, or other identifier, on the display 130 and on a mobile communication device 140 associated with the user P to enable the user P to identify the vehicle that he/she has requested for a ride service.” Ex. 1001, 4:6–10. Consistent with this description in the specification, we construed the term “indicator” as a code (e.g., a text string or an alphanumeric string), an icon, or other identifier, for display to enable a match between a user/rider and a driver. Institution Dec. 20. We did not see a basis in the claims or specification for Patent Owner’s contention that a “new unique indicator” must be “actively formulate[d] . . . for each rider-driver trip while the driver is in transit.” Id. at 20 (citing Prelim. Resp. 29). Patent Owner does not address the construction of “indicator” in its Response. For the reasons given, therefore, we maintain our construction of this term. We discuss Patent Owner’s contention that a new indicator must be “actively formulated” further in connection with our consideration of the claim term “generate,” infra.” slip op. at 15
Patent outcomesUS 9,892,637 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,892,637 - Applied Materials, Inc. v. Ocean Semiconductor LLCAll claims unpatentablePTAB · Feb 7, 2023 · IPR2022-00680 · APJ Miriam L Quinn · IPR · Final written decision
Claims 1–22 of the ’248 patent and claims 1–25 and 33–53 of the ’305 patent are unpatentable as obvious over Schulze and Gupta.
RulingsFinal written decision- Strike new argumentNew argument disregardedNew argument consideredGranted in part
“Petitioner an opportunity to respond raises concerns as to whether we should consider it. The issue of enablement is a mixed issue of law and fact, where underlying facts may be necessary to support such a conclusion. Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). The lack of evidence for the proposition that the art is not enabled and the further lack of an opportunity for rebuttal argument make this issue one that is not fully developed on the full record before us, and particularly because it was raised too late. Thus, we agree with Petitioner that this is an issue on” slip op. at 98
- Skill levelOther
“E. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“A. Whether the preamble is limiting The standard that governs the significance of the “preamble” in claim” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“monitoring and assessment system that is suitable for implementing the local scheduler and related data structures disclosed in Gupta, which is implemented in software. Id. ¶ 125. The need for a scheduler that works as a local optimizer is evidenced by the recognition in Gupta’s disclosure of real-time scheduling decisions, which are advantageous for dealing with unexpected or unplanned events in a manufacturing process. Id. ¶ 121 (citing Ex. 1008, 30:19−20). Further, the local optimization scheme would have been desirable for devising scheduling strategies for specific machines, resulting in a reduction of re-engineering efforts each time a new machine is added to the process flow. Id. ¶ 119. Because Gupta focuses on a specific machine and the strategy devised for each machine, the decision-making is simplified as it focuses on optimizing each machine and not re-programming the entire process flow for the factory. Id. ¶¶ 116−118. As stated above, the enhancement of using Gupta’s local optimizer stems from the recognition that global process flow scheduling was an NP-hard program of extensive computing costs; yet, Gupta solved for it by reducing the computational costs of scheduling through optimizing local machines, rather than performing global factory calculations each time an event occurs. Id. ¶¶ 114−116; Ex. 1008, 8:48−55, 13:22−34; 13:43−48; 14:6−11. The testimony of Dr. Shanfield is persuasive and supported by the facts, and we credit it accordingly. Dr. Shanfield regarding the expectation of success is supported by the facts and we credit it accordingly. Dr. Shanfield opines that Schulze’s system is specifically designed to monitor the state of the equipment and to provide notification of events like machine operation status transitions. 1342 Shanfield Decl. ¶ 123. Gupta’s local optimization scheme is driven by events like those that Schulze captures. Id. Gupta provides additional events that are useful for Schulze’s factory, such as machine loads and unloads. Id. Thus, we agree that Schulze’s system is particularly suitable for Gupta’s local optimization scheme. And according to Dr. Shanfield, the implementation of Gupta’s scheduler (together with its database and its related data structures) would be suitable for implementation in the computer of Schulze (automated monitoring and assessment system 107) because they are both software compatible. Id. ¶¶ 124−125. Once Gupta’s scheduler is implemented in Schulze’s computer, there are no changes to the functions performed by Schulze’s semiconductor fabrication system or Gupta’s local optimization scheme. Id. ¶ 127. The implementation would require adjustments to the local scheduler program, so that it can interpret and interact with the messages generated by the equipment and MES of Schulze. Id. However, Dr. Shanfield testifies that, “[b]ased on my industry experience, such routine adjustments to the local scheduler software involve tasks like making one-time inputs identifying status flags for each equipment module being characterized, and are well within the ordinary skill of a POSA.” Id. None of these tasks would have required special techniques or extraordinary skill given the well-known components and standards used in the Schulze and Gupta implementations. Id. ¶ 128.” slip op. at 57
Patent outcomesUS 6,907,305 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,907,305
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.