• The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10

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

    “a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19

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

    “claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24

  Patent outcomesUS 7,487,684 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,487,684
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.No claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01075 · APJ Terrence W Mcmillin · IPR · Final written decision

  Petitioner failed to show claims 1–6, 10, 12, 17–19, 21–23, 40–47, 51, and 52 unpatentable because the cited art did not teach or suggest a pixel defining layer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we again adopt Petitioner’s definition of the level of ordinary skill in the art. It is supported by the testimony of Dr. Pattison, and appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We find Patent Owner’s articulation of the level of ordinary skill to be imprecise, because Patent Owner does not specify the amount of experience possessed by an ordinarily skilled artisan. The unbounded reference to “experience” is vague and overly broad, as it could mean 1 year of experience or over 30 years of experience, for example. In addition, the ’578 patent is directed to “a pixel arrangement structure of an (OLED) [organic light emitting diode] display” (Ex. 1001, 1:22–23), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Petitioner has failed to show that the cited art teaches or suggests a “pixel defining layer” as recited. Neither party in this proceeding or in the ITC Investigation argued that “pixel defining layer” as recited in the challenged claims required construction, and neither party presented any arguments regarding the construction or meaning of this term.6 Pet. 13; PO Resp. 4–5. 5 37 C.F.R. § 42.104(b)(3) requires that a petition contain a statement identifying how a challenged claim is to be construed. 6 In our Decision instituting trial, we stated that “[i]f either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during We give the term “pixel defining layer” as recited its plain and ordinary meaning. For purposes of this decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Petitioner Has Not Shown That the Cited Art Teaches or Suggests All the” slip op. at 21

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

    “or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24

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

    “require for the same reasons set forth above.”). And, in discussing motivation to combine the teachings of Matthies and Yamada, Petitioner articulates no reasoning to support modifying Matthies’ structure based on Yamada to yield a “pixel defining layer.” See Pet. 69–75. Patent Owner argues that “[t]he Petition failed to identify any teaching or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24

  Patent outcomesUS 11,594,578 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,594,578
• Apple Inc. v. LBT IP I LLCNo claims unpatentable
  PTAB · Dec 15, 2023 · IPR2020-01189 · APJ John A Hudalla · IPR · Remand

  Claims 8, 10, 13, and 15 were not shown unpatentable because Sakamoto discloses only two battery power thresholds, which do not meet the construed multitude limitation.

  RulingsRemand decision

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

    “threshold values” includes GPS signal level thresholds, we start with the words of claim 8. Claim 8 recites a “battery power level monitor” that (1) “measures a power level of the charging unit” and (2) “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels.” Claim 8 further recites that “the power level compris[es] a multitude of threshold values determined by a user or system administrator.” The remainder of claim 8 states the purpose of the “multitude of threshold values,” which is “to intermittently activate or deactivate the location tracking circuitry to conserve power of the charging unit in response to the estimated charge level of the charging unit.” The natural reading of these recitations is that the “power level” associated with the “multitude of threshold values” is the battery power level that is (1) measured by the battery power level monitor and (2) adjusted by the battery power level monitor and applied to location tracking circuitry. We also note that the claim language already incorporates a limitation directed to “signal levels” insofar as the battery power level monitor “adjusts a power level applied to location tracking circuitry responsive to one or more signal levels” (emphasis added). As such, the limitation “one or more signal levels” is recited separately from the limitation “the power level comprising a multitude of threshold values.” Given “[t]he general presumption that different terms have different meanings,” Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1369 (Fed. Cir. 2012), we ascribe different meanings to the recited “signal levels” and “power level.”” slip op. at 15

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

    “the battery power thresholds between (1) high and normal sensitivity positioning modes and (2) normal sensitivity positioning mode and turning off power to the GPS receiver) and Sakamoto’s two GPS signal level thresholds (i.e., K1 and K2) for teaching “the power level comprising a multitude of threshold values.” Pet. 50–51; Pet. Reply 16–18. As discussed above, however, “the power level comprising a multitude of threshold values” refers to battery power level thresholds. See supra § II.C.2. We also determine above that signal level threshold values are not within the scope of “the power level comprising a multitude of threshold values.” See id. Accordingly, we are not persuaded that Sakamoto’s GPS signal level thresholds K1 and K2 teach the recited power level threshold values. Although Petitioner is correct that “Sakamoto uses the same modes with both sets of thresholds” and that both sets of thresholds might ultimately relate to conserving battery power (see Pet. Reply 17 (citing Ex. 1003 ¶ 58; Ex. 1004 ¶¶ 27–29)), we are not persuaded that these different types of thresholds are interchangeable within the scope of “the power level comprising a multitude of threshold values.” This is particularly true given that Petitioner already relies on Sakamoto’s GPS signal level thresholds K1 and K2 for teaching another aspect of claim 8, i.e., “responsive to one or more signal levels.” See Pet. 49–50. For these reasons, Petitioner has only established that Sakamoto teaches two battery power level thresholds within the scope of “the power level comprising a multitude of threshold values.” Because two threshold values are not a “multitude” (see supra § II.C.1), we find that Petitioner has not established that Sakamoto teaches “the power level comprising a multitude of threshold values,” as recited in claim 8. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claim 8 would have been obvious over Sakamoto. 3. Claims 10, 13, and 15 Claims 10, 13, and 15 each depend from claim 8. Ex. 1001, 17:4–10, 17:23–25, 17:29–33. Petitioner’s analysis for these claims does not cure the deficiencies discussed above with respect to claim 8. See Pet. 54–55. Thus, we determine Petitioner has not shown by a preponderance of the evidence that the subject matter of claims 10, 13, and 15 would have been obvious over Sakamoto.” slip op. at 31

  • BurdenNot shown unpatentable

    “III. CONCLUSION Petitioner has not shown, by a preponderance of the evidence, that (1) the subject matter of claims 8, 10, 13, and 15 would have been obvious over Sakamoto; (2) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and AAPA; or (3) the subject matter of claims 8, 10, 13, and 15 would have been obvious over the combination of Sakamoto and Hayasaka.” slip op. at 33

  Patent outcomesUS 8,497,774 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,497,774
• ZTE Corporation / ZTE (USA), Inc. et al. v. WSOU Investments, LLC D/B/A Brazos Licensing And DevelopmentNo claims unpatentable
  PTAB · Oct 14, 2022 · IPR2021-00698 · APJ John A Hudalla · IPR · Final written decision

  Claims 1–45 were not shown unpatentable because the cited references did not establish the claimed limitations arranged as required or cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art (or “POSITA”) “would at least have [had] a bachelor’s degree in electrical engineering, computer engineering, or a related engineering discipline and two or more years of industry experience in the field of telecommunications, or equivalent experience, education, or both” and “knowledge or familiarity with telecommunication.” Pet. 13 (citing, inter alia, Ex. 1003 ¶ 41). Patent Owner does not propose an alternative definition. See PO Resp. 4. We adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifiers “at least” and “or more,” which introduce ambiguity. Based on the full trial record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’505 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “In our Decision on Institution, we determined that 35 U.S.C. § 112 ¶ 6 did not apply to the limitation in claim 14 that recites “a formatter to format the received data into at least one SMS (Short Message Service) message.” Dec. on Inst. 11 (citing Diebold Nixdorf, Inc. v. Int’l Trade Comm’n, 899 F.3d 1291, 1298 (Fed. Cir. 2018); Ex. 1001, 1:66–2:1, 4:26–27, 4:46–51). Neither party addressed this determination after institution. We maintain our determination that § 112 ¶ 6 does not apply to this limitation, and we instead apply the plain and ordinary meaning. Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Thus, we determine that no terms require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “c. Analysis At the outset, we note that Petitioner relies solely on an express anticipation theory for this ground. Petitioner did not put forth any contentions based on inherent anticipation, and Petitioner did not put forth any arguments or evidence like those in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015), to show that “a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Thus, we must decide whether Haller discloses “all elements of [the] claimed invention arranged as in the claim.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).” slip op. at 19

  Patent outcomesUS 7,203,505 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,203,505
• Netapp, Inc. v. Proven Networks, LLCNo claims unpatentable
  PTAB · Apr 7, 2022 · IPR2020-01436 · APJ Trevor M Jefferson · IPR · Final written decision

  NetApp did not prove claims 1–20 unpatentable: the Berger and Kiremidjian combinations failed to establish the claimed automatic pass or a sufficient rationale and expectation of success for modifying Berger.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that: A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had a bachelor’s degree in computer science or computer engineering (or equivalent), and at least three years of work experience in the field of computer networking including networking protocols and switch and router design and architectures. With more education, for example, postgraduate degrees and/or study, less experience is needed to attain an ordinary level of skill in the art. Similarly, more experience can substitute for formal education. Pet. 15 (citing Ex. 1003 ¶¶ 37–38). Patent Owner does not contest Petitioner’s assertions. See PO Resp. 6; Ex. 2004 ¶ 39. We agree with and adopt Petitioner’s statement of the level of ordinary skill in the art.” slip op. at 10

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

    “In sum, we are not persuaded that “rate-limit hierarchy” as recited in claim 1 requires “a system where the packet in question must satisfy rate-limit checks for all the classifications that the packet falls under in order for the packet to be deemed as having passed the overall rate check.” PO Resp. 6. Thus, we reject Patent Owner’s proposed construction of “rate-limit hierarchy.” Because no express construction is needed for our decision, we do not expressly construe “rate-limit hierarchy” or any of the claim limitations. See Nidec Motor, 868 F.3d at 1017 (holding that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the full record, we credit Patent Owner’s declarant testimony (Ex. 2008 ¶¶ 85–90) over Petitioner’s reliance on the evidence and argument presented for claim 2. See Pet. 32; Ex. 1003 ¶ 93; Reply 22– 22; PO Resp. 37–39; Sur-reply 25; Ex. 2008 ¶¶ 85–90. In particular, Petitioner’s evidence does not address the specific combination of Berger modified by Kiremidjian. Reply 22–23; Ex. 1003 ¶¶ 58–70, 93. As such, Petitioner fails to rebut persuasively Dr. Hernandez’s testimony regarding the decreased efficiency of Berger’s overall pass logic as modified by Kiremidjian. See Sur-reply 25–26; Ex. 2008 ¶¶ 85–90; Reply 22–28; Ex. 1003 ¶ 58–70, 93. In sum, we find that Petitioner’s arguments are not persuasively supported by the evidence provided in the Petition. Id.” slip op. at 29

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

    “We agree with Patent Owner that Petitioner’s motivation to modify Berger’s pass logic is not sufficient or persuasive on the full record. See PO Resp. 33–37; Ex. 2008 ¶¶ 77–84. An assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (stating that “‘conclusory statements’ alone are insufficient” and provide “insufficient articulations of motivation to combine”; “instead, the finding must be supported by a ‘reasoned explanation’” (citation omitted)). With respect to modifying Berger’s logic with Kiremidjian’s parallel logic, the Petition identifies Kiremidjian’s parallel architecture that “determine[s] all rate checks and logic of processing packets once all rate checks are passed,” but fails to articulate persuasively a motivation to modify the logic of Berger with Kiremidjian’s logic requirement or how Berger would be modified. See Pet. 32; Ex. 1003 ¶ 93. Although Petitioner’s Reply also identifies specific benefits of using a portion of Kiremidjian’s logic to solve problems with Berger’s existing logic (Reply 19–20, 22), the Petition fails to adequately address the benefits of Kiremidjian’s logic to solve potential deficiencies in Berger (Pet. 31–32; Ex. 1003 ¶ 93). We also find unavailing Petitioner’s argument regarding problems with Berger’s existing logic based on bandwidth. See Reply 22 (citing Ex. 1005, 10:46–65; Ex. 1003 ¶ 93). First, we find no adequate discussion of Berger’s problems in the Petition. Second, the declaration testimony Petitioner cites does not adequately support the identified potential problems with Berger’s logic and is instead directed to Kiremidjian’s teachings. Reply 22–23; Ex. 1003 ¶ 93. In addition, Petitioner’s Reply only alleges that Berger could suffer from the bandwidth issues, which does not persuasively support a motivation to modify Berger’s logic using Kiremidjian’s logic to resolve this alleged issue. Reply 22–23; Ex. 1003 ¶ 93. In sum, the Petition fails to persuasively identify and address the issues presented when Berger is implemented in parallel that warrant the modified combination with Kiremidjian. See Pet. 31–32; Reply 22–23; Ex. 1003 ¶ 93.” slip op. at 27

  Patent outcomesUS 7,450,507 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,450,507
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Feb 8, 2022 · IPR2020-01276 · APJ John A Hudalla · IPR · Final written decision

  The Board held claims 1–3, 5–7, 13–15, 18, 20, 21, 24, 25, 27, and 29 not unpatentable over either asserted obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “After institution, neither party put forth arguments related to the level of ordinary skill. We discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Thus, a person of ordinary skill in the art would have had either (1) a Bachelor of Science in Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing protocols and/or equipment for streaming multimedia data; or (2) a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing protocols and/or equipment for streaming multimedia data. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’796 patent and the asserted prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “independent claims 1, 15, 20, and 27 are limiting. Dec. on Inst. 10–11. Petitioner does not take an express position on whether the preambles of the challenged claims are limiting. See Pet. 21 (stating that Geagan teaches the preamble “to the extent it is limiting”). Patent Owner supports our preliminary determination that the preambles are limiting. PO Resp. 37–41. Given this posture, we discern no reason to change our initial determination that the preambles are limiting. Thus, even though the disposition of this case does not turn on any particular limitation in the preamble, we maintain our determination that the preambles of claims 1, 15, 20, and 27 are limiting to the extent they color our analysis of Petitioner’s rationale for combining various prior art references.” slip op. at 9

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

    “We determine that no terms require explicit construction.2 See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “Petitioner attempts to decouple these central control aspects from the functionality of sliding windows. In particular, Petitioner argues that “[t]he majority of the functionality for implementing the sliding window buffers is found in Vishlitzky’s stream servers themselves” and that Patent Owner has not established “that the controller servers of Vishlitzky exercise control over the playout history, the buffers, or sliding window functionality of Vishlitzky’s stream servers.” Pet. Reply 8–9. Yet Petitioner expressly relies on Vishlitzky’s admission control program, which runs on controller servers 28, 29, to teach the “determining” step of claim 1. Pet. 35–36, 40–41; Pet. Reply 21–22. Petitioner has not explained how the admission control program’s centralized function of choosing an appropriate stream server to service a request (see Ex. 1010, 7:62–8:3) would be implemented in the stream servers themselves. In addition, Petitioner’s analogy between Vishlitzky’s controller servers and the memory controllers used with Geagan’s proxy (Pet. 63; Pet. Reply 9) does not detail how and whether Petitioner proposes to modify Vishlitzky’s centralized controller functions such that they might be compatible with “the distributed nature of Geagan’s proxy approach,” as Petitioner characterizes it. Pet. Reply 10. At the oral hearing, Petitioner also suggested that a controller within a single proxy from Geagan could allocate incoming requests to multiple of Vishlitzky’s stream servers within that same proxy. Tr. 55:1–57:21; see also PO Sur-reply 23–24 (discussing this potential argument). In other words, Petitioner seemed to suggest that multiple stream servers from Vishlitzky’s stream server architecture in Figure 16, along with controller servers from Figure 2, could be replicated in each of Geagan’s proxies. Yet Petitioner disavows such a mapping in its Reply: “[T]he Petition does not propose that a POSITA would have bodily incorporated the entirety of Vishlitzky’s hardware control structure when implementing Geagan’s system using Vishlitzky’s ‘sliding window’ to store cached streaming content.” Pet. Reply 6. Nor was this the combination described in the Petition. Instead, Petitioner proposed “to implement the buffer of Geagan as a ‘pre-configured playout history (PH) buffer’ . . . because Vishlitzky teaches that it is advantageous to pre-configure a playout buffer.” Pet. 34; see also id. at 62–63 (“[A] POSITA would have had a reasonable expectation of success in implementing details of the ATM-based stream server of Vishlitzky in Geagan’s proxy . . . .”). Petitioner further characterizes this as “[t]he buffer of Geagan’s proxy, as implemented as a pre-configured PH buffer per Vishlitzky.” Pet. 39. And, importantly, Petitioner cites the creation of another proxy device in Geagan for teaching the recited “non pre-configured PH buffer”: “Geagan in view of Vishlitzky discloses ‘servicing the first request from a non pre-configured PH buffer,’ such as by live-streaming content using a buffer at the proxy device that is created at the time of the request for an unpopular live stream.” Pet. 42 (emphasis added). Finally, even if Petitioner’s papers had proposed a combination where Vishlitzky’s entire stream server and controller architecture is incorporated in each of Geagan’s proxies, Petitioner has failed to articulate reasons with some rational underpinning why an ordinarily skilled artisan would have made this combination. Thus, we are not persuaded by Petitioner’s arguments. At the very least, Petitioner has not explained where Vishlitzky’s controller servers would be disposed in the combined system and how they” slip op. at 28

  Patent outcomesUS 6,757,796 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,757,796
• DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentable
  PTAB · Jan 18, 2022 · IPR2020-01041 · APJ Debra K Stephens · IPR · Final written decision

  DISH failed to prove claim 13 unpatentable as obvious over either Durand and Bennett or Goyal and Bennett.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima 261 F.3d 1355). Based on the present record, including the disclosure in the ’456 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine Petitioner’s asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’456 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)). As we determine the four instances of “at least” in Petitioner’s formulation introduce ambiguity, we remove these terms from our definition. Accordingly, we determine an ordinarily skilled artisan would have a Bachelor of Science in one of Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing resource reservations for UNIX-based computing systems, or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing resource reservations for UNIX-based computing systems.” slip op. at 7

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

    “We determine that it is not necessary to provide an express interpretation of any terms of claim 13 (Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review)).” slip op. at 9

  • BurdenNot shown unpatentable

    “However, Petitioner has not set forth with specificity where Bennett teaches the request uses the one or more object references. Indeed, Petitioner has not explained how these two teachings of Bennett disclose the recited limitations with sufficient specificity or how one of ordinary skill in the art would modify Durand with these teachings of Bennett to achieve the recited limitations. Accordingly, Petitioner has not established that the combination of Durand and Bennet teaches the subject matter of claim 13. Therefore, based on the entire trial record, we determine Petitioner has not established by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Durand and Bennet under 35 U.S.C. § 103.” slip op. at 19

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In its Reply, as noted by Patent Owner (PO Sur-reply 11), Petitioner offers a new theory, pointing to a different system call of Goyal (Pet. Reply 19–20 (citing Ex. 1090 ¶ 144 (citing Ex. 1002 ¶ 352–354))). Petitioner contends this new argument is to address Patent Owner’s alleged contention that “‘quality of service’ must already be ‘provided’ at the same time when the correspondence to the ‘reference to an object’ is created (Pet. Reply 19 (citing Ex. 1090 ¶ 141)). Thus, in Dr. Negus’ Reply Declaration, Dr. Negus asserts Goyal teaches the recited “quality of service guarantees that correspond to a reference to an object” relying on the “int hsfq_move (int from, int to, .....)” which “is used to move a thread from one leaf node to another”1 (Ex. 1090 ¶ 144). Petitioner’s alleged reliance on the hsfq_move (int from, int to, …….) system call instead of the int hsfq_mknod (char *name, int parent, int weight, int flag, scheduler_id side) system call represents a change in Petitioner’s unpatentability contentions that is presented for the first time in Petitioner’s Reply (see Pet. Reply 19–20). We acknowledge that the Petition mentions a “move” function: “Additionally, system calls are used to remove, move, and administer nodes in the scheduling structure. Goyal also discloses several additional functions to manage the scheduling structure, including removing, moving, and administering nodes.” (Pet. 61 (citing Ex. 1002 ¶¶ 350–352 (citing Ex. 1007 § 4))). But the cited portion of Dr. Negus’ Declaration simply states that there are other system calls, including “int hsfq_parse(char *name, int hint),” “int hsfq_rmnod(int id, int 1 We note Dr. Negus refers to the system call as “int hsfq_move” (see e.g., Ex. 1002 ¶¶ 144, 352) although Goyal discloses the system call as “hsfq_move” (Ex. 1007 § 4). We consider Dr. Negus’ naming to refer to the same system call as disclosed in Goyal. mode),” and “int hsfq_admin(int node, int cmd, void *args)” and the system call “‘int hsfq_move(int from, int to, .....)’ which ‘is used to move a thread from one leaf node to another’” (Ex. 1002 ¶ 352; see also id. ¶ 144 (repeating the same information as paragraph 352)). Additionally, these teachings of Goyal are discussed in conjunction with the limitation “utilizing an application programming interface . . . to establish one or more quality of service guarantees” (id. ¶¶ 356, 359). Thus, Dr. Negus’ initial Declaration does not elaborate on the move function, and the Petition does not rely on the “hsfq_move” system call to teach the limitations of claim 13. Petitioner asserts that this argument in reply is to address “Patent Owner’s new claim construction position” (Pet. Reply 19). We disagree. As outlined above, the Petition does not identify where an object reference is “used in the request,” as specifically recited in claim 13. Petitioner’s new reply argument, therefore, attempts to fill in a gap in Petitioner’s unpatentability contentions from the Petition that was pointed out by Patent Owner. Under the circumstances here, we do not consider this a permissible reply argument (see Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”)). Thus, we do not consider Petitioner’s newly presented contentions.” slip op. at 26

  Patent outcomesUS 6,725,456 not shown unpatentable
  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 6,725,456
• Unified Patents, LLC v. 2bcom, LLCNo claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00996 · APJ Sharon Fenick · IPR · Final written decision

  Claims 12–17 and 19–21 were not shown unpatentable under either §103 ground because Petitioner failed to prove that Nüsser was publicly accessible prior art.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “Because there are many ways in which a reference may be disseminated to the interested public, ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication.’” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)); see also Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018).” slip op. at 10

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Because these arguments relate to a print version of the conference proceedings, they amount to new arguments that Petitioner chose not to make in the Petition and are not responsive to Patent Owner’s arguments asserting flaws in Petitioner’s contentions and evidence, which related to whether the digital version of Nüsser, presented here as Exhibit 1006, was available on the critical date. Rather, they raise new issues regarding actual dissemination of or the availability of a print version of the proceedings for the conference. See Acceleration Bay, LLC., 908 F.3d at 775; Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016). New evidence may be submitted to respond to arguments raised in a prior brief or as rebuttal evidence, however, in this case, we do not agree that the new evidence and arguments here are responsive to Patent Owner’s arguments, but rather they appear to take a “new direction with a new approach.” Patent Trial and Appeal Board Consolidated Trial Practice Guide, November 2019 (“CTPG”),6 73–75. Petitioner does not show or assert that the print proceedings contain the same version of Nüsser as that presented as Exhibit 1006. Nor has Petitioner filed a copy of Nüsser from a print version of the proceedings” slip op. at 24

  • ExcludeNot reached

    “B. Patent Owner’s Motion to Exclude Patent Owner moves to exclude all or part of Exhibits 1006, 1007, 1010, 1012, 1015–1018, 1023–1028, 1036–1040, 1045, and 1046. PO Mot. Exclude 1. Because we ultimately find for Patent Owner without excluding the documents listed in Patent Owner’s Motion, we dismiss as moot Patent Owner’s Motion to Exclude.” slip op. at 26

  Patent outcomesUS 7,127,210 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,127,210
• Apple Inc. v. California Institute Of TechnologyNo claims unpatentable
  PTAB · Dec 27, 2018 · IPR2017-00219 · APJ Trevor M Jefferson · IPR · Final written decision

  Claims 1–8, 11–17, 19–22, and 24–33 were not shown unpatentable because the obviousness combinations lacked a reasonable expectation of success.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “one” as recited in claims 1 and 3 is “within 50% of one.” Pet. 24–25. Petitioner argues that this is consistent with the ’710 patent specification, which states that the inner code 210 of Figure 1, “can have a rate that is close to one, e.g., within 50%, more preferably 10% and perhaps even more preferably within 1% of 1.” Pet. 24–25 (quoting Ex. 1201, 2:62–64 and citing Ex. 1206 ¶¶ 102–103) (emphasis omitted). Patent Owner does not provide an express claim construction in this proceeding. In related proceeding IPR2017-00210, Patent Owner argues that the term “close to one” does not require construction and that the ’710 patent explains that the rate of a coder is the number of input bits divided by the number of output bits. IPR2017-00210, Paper 35, 18. We determine that “close to one” as recited in the challenged claims is construed as “within 50% of one.”” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We determine that Petitioner’s proposed definition comports with the qualifications a person would have needed to understand and implement the teachings of the ’710 patent and the prior art of record. Accordingly, we apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 11

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

    “As part of our obviousness analysis, we consider “the scope and content of the prior art.” See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In this regard, we credit Patent Owner’s testimony and evidence that an important aspect of the art in this case is the relative unpredictability of developing error-correction codes. See PO Resp. 5–6, 45–46 (citing Ex. 2004 ¶¶ 116–117; Ex. 2033, 256:21–257:12) (“The field of error correction coding has historically been characterized by significant experimentation and unpredictable results . . . . Even when well-performing codes are identified, the reasons for the improved performance are often not understood.”)); Ex. 2004 ¶ 47. We do not agree with Petitioner that the need to run experiments in an unpredictable field, such as error-correction coding, indicates anything about whether such experiments ultimately would have been successful at the time of the invention. Importantly, “[u]npredictability of results equates more with nonobviousness rather than obviousness, whereas that which is predictable is more likely to be obvious.” Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A., 865 F.3d 1348, 1356 (Fed. Cir. 2017). In the absence of any evidence rooted in the Petition that substantiates a reasonable expectation of success, Petitioner’s reliance on a known need for experimentation is not sufficient to support its obviousness rationale.9 See Arctic Cat Inc. v. Bombardier Recreational Prod. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (“[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan would have had a reasonable expectation of success from doing so.” (internal quotation omitted)).” slip op. at 18

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedOther

    “with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he could do in the year 2018 when armed with Caltech’s patent disclosures and publications, [the inventor’s] original coding work, contemporary resources, (e.g., Dr. Frey (¶51) used Matlab, a software program that received over 35 version updates since May 2000), and 18 years of post-filing date knowledge” PO Sur-Reply 7. Because this evidence is not tied to the state of the art at the time of the invention, it is not probative of anticipated success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367 (Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” (emphasis added)). As part of our obviousness analysis, we consider “the scope and content of the prior art.” See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In this regard, we credit Patent Owner’s testimony and evidence that an important aspect of the art in this case is the relative unpredictability of developing error-correction codes. See PO Resp. 5–6, 45–46 (citing Ex. 2004 ¶¶ 116–117; Ex. 2033, 256:21–257:12) (“The field of error correction coding has historically been characterized by significant experimentation and unpredictable results . . . . Even when well-performing codes are identified, the reasons for the improved performance are often not understood.”)); Ex. 2004 ¶ 47.” slip op. at 18

  Patent outcomesUS 7,116,710 not shown unpatentable
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 7,116,710
• Apple Inc. v. California Institute Of TechnologyNo claims unpatentable
  PTAB · Dec 27, 2018 · IPR2017-00210 · APJ Trevor M Jefferson · IPR · Final written decision

  The Board held claims 1–8, 11–17, 19–22, and 24–33 not unpatentable because Apple did not prove anticipation by Frey or obviousness over the asserted combinations.

  RulingsFinal written decision

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

    “given reference qualifies as a prior art “printed publication” involves a caseby-case inquiry into the facts and circumstances surrounding its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made “sufficiently accessible to the public interested in the art” before the critical date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655 F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (citation omitted). Petitioner has put forth date stamp evidence that a copy of the conference proceedings including Frey was at least received in the Cornell University Library by March 20, 2000. Ex. 1015, 16. Petitioner also put forth a declaration of Pamela Stansbury, an employee in the Original Cataloging Unit of the Cornell University Library, who testifies that, based upon her review of library records and her knowledge of standard operating procedures, Frey was “publicly available at the Cornell University Library as of March 20, 2000.” Ex. 1031 ¶ 4; see also Paper 22, 5 (Petitioner’s motion to submit supplemental information, which includes a description of Exhibit 1031); Paper 32 (granting Petitioner’s motion to submit supplemental information). Patent Owner does not dispute that Frey was publicly available as of March 20, 2000. See PO Resp. 15. Based on Petitioner’s evidence, we determine that Frey qualifies as a prior art printed publication as of March 20, 2000.” slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “It is well established that when a party seeks to prove conception via the oral testimony of a putative inventor, the party must proffer evidence corroborating that testimony. . . . There is no particular formula that an inventor must follow in providing corroboration of his testimony of conception. Rather, whether a putative inventor's testimony has been sufficiently corroborated is determined by a ‘rule of reason’ analysis, in which ‘an evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor's story may be reached.’ However, that ‘rule of reason’ analysis does not alter the requirement of corroboration of an inventor's testimony. Evidence of the inventive facts must not rest alone on the testimony of the inventor himself. Singh, 317 F.3d 1240–41 (internal citations omitted) (quoting Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)). With respect to priority and antedating a reference, the Federal Circuit has stated the following regarding burdens and required documentary support: When the issue of priority concerns the antedating of a reference, the applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference. Demonstration of such priority requires documentary support, from which factual findings and inferences are drawn, in application of the rules and law of conception, reduction to practice, and diligence. The purpose is not to determine priority of invention—the province of the interference practice—but to ascertain whether the applicant was in possession of the claimed invention sufficiently to overcome the teachings and effect of an earlier publication of otherwise invalidating weight. In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphases added); see also Perfect Surgical Techniques, Inc. v. Olympus America, Inc., 841 F.3d 1004, 1008 (Fed. Cir. 2016) (citing Steed). “The principles are legal, but the conclusions of law focus on the evidence, for which the Board’s factual findings are reviewed for support by substantial evidence.” Steed, 802 F.3d at 1316; see also NFC Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir. 2017).” slip op. at 14

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

    “2. Analysis To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” Am. Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 49 CCPA 993, 301 F.2d 676, 681 (1962)). We analyze the instant ground with these principles in mind.” slip op. at 20

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

    “We are persuaded by Patent Owner’s arguments that Petitioner failed to establish a reasonable expectation of success for the proposed modifications to Frey and Divsalar. Petitioner’s argument in response acknowledges the missing expectation of success evidence by relying on the experimental nature of the field. Pet. Reply 9. Petitioner states that [a]s [Patent Owner] concedes, rigorous mathematical analysis of codes is difficult, and, as a result, POSAs routinely developed codes by experimentation. POR, 4. Encouraged by Frey’s results, POSAs would have been motivated to use Frey’s irregularity in Divsalar. Indeed, this is exactly what Dr. Frey suggested to Dr. Divsalar in an email dated December 8, 1999. Ex. 1035, App. A; Ex. 1064, 185:5–8. The Petition showed that POSAs would have had a reasonable expectation of success because it was trivial to modify Divsalar to make it irregular by repeating some of the information bits more than others, which meets the limitations of the claimed invention. Pet., 44–47. . . . Dr. Mitzenmacher agreed that simply repeating the first two bits in Divsalar “q+10” times and the rest “q” times would make the code irregular. Ex. 1062, 153:11-154:8. Pet. Reply 9 (emphasis added). To buttress the argument that a skilled artisan would have had a reasonable expectation of success in the proposed modifications, Petitioner introduces new testimony and simulations from a new declarant, Dr. Frey, to confirm that using Frey’s irregularity in Divsalar would not have been difficult and would have yielded a reasonable expectation of success. Id. at 10 (citing Ex. 1068). Yet, even if we were to deem the testimony and simulation to be within the proper scope of a reply brief,6 they do not support a reasonable expectation of success at the time of the invention. We agree with Patent Owner that “[i]t is completely irrelevant what Dr. Frey claims he could do in the year 2018 when armed with Caltech’s patent disclosures and publications, [the inventor’s] original coding work, contemporary resources, and some 18 years of post-filing date knowledge.” PO Sur-Reply 6. Because this evidence is not tied to the state of the art at the time of the invention, it is not probative of anticipated success. See Millennium Pharm., Inc. v. Sandoz Inc., 862 F.3d 1356, 1367 (Fed. Cir. 2017) (quoting Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)) (“Those charged with determining compliance with 35 U.S.C. § 103 are required to place themselves in the minds of those of ordinary skill in the relevant art at the time the invention was made, to determine whether that which is now plainly at hand would have been obvious at such earlier time.” (emphasis added)).” slip op. at 28

  Patent outcomesUS 7,116,710 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,116,710

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.