• Jumio Corporation v. Facetec, Inc.No claims unpatentable
  PTAB · Jun 17, 2026 · IPR2025-00109 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–24 were not shown unpatentable because the petitioner failed to establish motivation to combine the references and failed to show the claimed different-distance image capture.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 11–12. In particular, based on the teachings of the ’910 Patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’910 Patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 10

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

    “C. Claim Construction We interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”” slip op. at 10

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

    “We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations — “substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques — are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 13–17; Pet. Reply 16–17. Those motivations might have been suitable had Tanii described techniques to verify three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 13–17, 25–28. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 16

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

    “distance from the user. Derakhshani teaches two different approaches (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 13 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Ex. 1005, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Ex. 1005, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject. Zhang also does not expressly disclose capturing a second image at a second distance. Petitioner acknowledges as much stating “[a]lthough Zhang does not expressly say that the second image is captured at a second distance different from the distance of the first image, this would have been obvious to a POSITA.” Pet. 61 (citing Ex. 1003 ¶ 1046). Because Zhang does not expressly disclose capturing a second image at a second distance, Petitioner once again relies on expert testimony to argue that the multiple images disclosed in Zhang would have been taken at different perspectives resulting from rotating or translating the position of the camera and that taking images at different distances would have enhanced Zhang’s homography-transformation procedure. Pet. 61–62 (citing Ex. 1003 ¶ 1046). From here Petitioner repeats many of the same arguments it made regarding the parallax approach from Derakhshani, except that these arguments are on even weaker footing because Zhang does not mention taking images by translating the position of the camera, nor even that the multiple images taken should be from different perspectives. Each of these assertions are made solely on the basis of Petitioner’s expert testimony, and as such are not persuasive. Pet. 61–62 (citing Ex. 1003 ¶¶ 1046). Petitioner’s argument that Zhang teaches capturing a second image at a second distance simply lacks sufficient support from Zhang’s disclosure.” slip op. at 25

  Patent outcomesUS 11,874,910 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,874,910
• Jumio Corp. v. Facetec, Inc.No claims unpatentable
  PTAB · Jun 17, 2026 · IPR2025-00108 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 1–24 were not shown unpatentable because the asserted combinations lacked adequate motivation to combine and did not teach capturing images at different distances.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 27–28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 13–14. In particular, based on the teachings of the ’938 patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’938 patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 9

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

    “C. Claim Construction We interpret claim terms using “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (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

    “images are three dimensional—let alone a technique that captures two images at different distances, compares the images for certain differences, and verifies three dimensionality based on those differences, as recited by the claim. Instead, Tanii describes a system that “corrects warp in which the perspective is exaggerated when an image is captured with the user’s face at close range.” Ex. 1007, code (57). In particular, Tanii recognizes the physical phenomenon of perspective distortion (fish-eye distortion) where “[i]f the image of the face of a person or the like is captured from a point that is relatively nearby, an image is obtained in which the perspective appears exaggerated,” i.e., the user image is warped or distorted. Id. ¶ 6; see id. ¶ 48, Fig. 4B. Tanii corrects such warped images by enlarging peripheral areas of the user image. Id. ¶¶ 55–56.” slip op. at 17

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

    “distance from the user. Derakhshani teaches two different approaches: (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 12 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Derakhshani, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, instead, focused specifically on the use of the word “slid” in Derakhshani as indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Derakhshani, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject.” slip op. at 27

  Patent outcomesUS 11,693,938 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 11,693,938
• Jumio Corporation v. Facetec, Inc.No claims unpatentable
  PTAB · Jun 17, 2026 · IPR2025-00107 · APJ Bach V Hoang · IPR · Final written decision

  Claims 1–20 were not determined unpatentable because the petition did not establish motivation to combine the references or that they taught capturing images at different distances.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 27–28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 8. In particular, based on the teachings of the ’606 Patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’606 Patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 9

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

    “The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (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

    “We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations—“substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques—are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 12–16; Pet. Reply 6–7. These motivations might have been suitable had Tanii described techniques for verifying three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 12–16, 19–23. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond with approaches for verifying three-dimensionality, and so does not adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 16

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusObjective indicia outweighedDecided for patent owner

    “Patent Owner has demonstrated a nexus by showing that certain objective indicia, discussed below, are the direct result of the unique characteristics of the claimed invention. As discussed above in our summary of the ’606 Patent and reflected in our discussion of Petitioner’s obviousness challenges (see §§ I.F, II.E.1, II.E.2, II.E.3), the unique characteristics of the claim relate to verification of three dimensionality by comparing two images taken at different distances for perspective distortion. Indeed, those features are what distinguish over the prior art. See id. Furthermore, Patent Owner, supported by testimony from its Chief Technology Officer, Mr. Rose, asserts the unique characteristics claimed are reflected in the “3D liveness checks” its ZoOm software product provides because ZoOm “confirms that a user is 3D by comparing images taken at different distances for expected differences in biometric data, such as the presence of appropriate perspective distortion and differences.” PO Resp. 25 (citing Ex. 2059 ¶ 49). Patent Owner’s assertion is further supported by a “FaceTec Software Explanation” stating that its software uses “near & far image data . . . to determine if the expected differences in perspective distortion are present in the image data” and, from that, “decides if there is sufficient evidence in the image data to conclude with a high degree [of] confidence that the image data contains first-generation biometric data captured in real-time from a live, physically present user.” Ex. 2067; see PO Resp. 25–26. As such, the 3D liveness checks provided by Patent Owner’s software are indicative of the unique characteristics of the claimed invention and, as we discuss below, certain objective indicia of nonobviousness have a direct nexus to the 3D liveness checks of its software.” slip op. at 30

  Patent outcomesUS 11,157,606 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,157,606
• Jumio Corp. v. Facetec, Inc.No claims unpatentable
  PTAB · Jun 17, 2026 · IPR2025-00106 · APJ Nabeel U Khan · IPR · Final written decision

  The Board determined claims 1–20 were not unpatentable because Jumio did not show sufficient motivation to combine the references or that they taught capturing images at different distances.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner argues Petitioner’s proffered level of skill is too broad with respect to work experience. PO Resp. 28. Patent Owner counters that a person having ordinary skill in the art would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, physics, or a related field, and two years’ work experience related to biometric security, facial authentication, and three-dimensional computer vision such that they would have had significant academic and/or work experience in both facial biometrics and computer vision. Id. at 28–29. Having considered the full record at trial, we maintain the preliminary finding regarding the level of ordinary skill in the art. See Inst. Dec. 11–12. In particular, based on the teachings of the ’471 patent and the asserted prior art, we are persuaded that an ordinarily skilled artisan would have had a work experience related to biometrics, facial authentication, computer vision, and/or optics as at least one of those fields is respectively implicated by the ’471 patent and the asserted prior at. Moreover, our decision would be the same under either proposed level of skill.” slip op. at 10

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

    “that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under the principles set forth by the Federal Circuit, the “words of a claim ‘are generally given their ordinary and customary meaning,’” as would be understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties do not dispute any claim terms or phrases and our decision does not require construing any particular claim terms or phrases, therefore, we do not expressly construe any particular claim term or phrase. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (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 successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We find that these reasons would not have adequately motivated a person having ordinary skill in the art to combine and modify the references in Petitioner’s asserted manner to reach the claimed features. Petitioner’s motivations—“substitution,” “obvious alternative . . . approaches,” “use of a known technique,” and “complimentary” techniques—are all similarly based on swapping or adding techniques for verifying three dimensionality. See Pet. 12–16; Pet. Reply 6–7. These motivations might have been suitable had Tanii described techniques for verifying three dimensionality, but Petitioner has not shown that Tanii describes any technique to verify three dimensionality. See Pet. 13–17, 25–28. Instead, as discussed above, Tanii describes the existence of the perspective distortion phenomenon and a technique for correcting it. As such, substituting the knowledge that perspective distortion exists and techniques to correct it does not correspond with approaches for verifying three-dimensionality, and so does not adequately motivate Petitioner’s combination. Put another way, because Tanii does not teach an approach for verifying three-dimensionality, Tanii’s techniques cannot be used as a substitute for approaches that do verify three dimensionality simply because Tanii discloses the concept of perspective distortion.” slip op. at 18

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

    “none of the relied upon references teach capturing two images at two different distances, as required by limitations 1[d3] and 1[d4]. These limitations recite “moving the camera from a first location to a second location, the second location being a second distance from the user” and “capturing at least one second image of the user taken with the camera of the computing device at the second distance from the user, the second distance being different than the first distance.” Derakhshani does not teach capturing a second image at a second distance from the user. Derakhshani teaches two different approaches: (1) focus-distance approach and (2) parallax approach. Petitioner acknowledges that the focus-distance approach does not expressly disclose capturing a second image at a second distance. Pet. 13 (distinguishing “focus distances” from “actual distances.”). This is because focus-distance, by definition, is not actual distance. Ex. 1005, 16:47–48 (“Focus distance is the distance from a sensor to a point in its field of view that is perfectly in focus.”) In Derakhshani’s focus-distance approach the camera stays the same distance from its subject—only the focus distance changes. Id. at 16:66–17:2 (“By comparing degree of focus for a landmark in images with different focus distances, the distance from the sensor to the landmark may be estimated.”) Derakhshani’s parallax approach also does not expressly disclose capturing a second image at a second distance. In the parallax approach the camera is rotated or slid about the user to create images with different perspectives. Ex. 1005, 17:59–64 (“In some implementations, the sensor is moved about the subject during image capture to collect image data from different orientations relative to the subject. For example, a single camera may be rotated or slid slightly or multiple cameras at different positions may be used for image capture.”). Rotating a camera around a user does not change the distance of the camera from the user. At the hearing Petitioner, instead, focused specifically on the use of the word “slid” in Derakhshani as indicating that Derakhshani takes a second image at a second distance. Tr. 16:9–12 (“[Petitioner’s Counsel: . . . Dr. Daft is talking about some of the terms that Derakhshani is using. For example, the term slid and shown in the images, he talks about how slid refers to the different distances between the sensor and the user.”). We determine that it is more likely that the word “slid,” as used in the relevant portion of Derakhshani, further describes the rotation of the camera about the user. Derakhshani indicates as much by describing that both rotating and sliding the camera are examples of how the camera sensor is “moved about the subject during image capture.” Derakhshani, 17:60–61. Thus, sliding the camera does not necessarily disclose moving the camera to a second distance from the subject.” slip op. at 27

  Patent outcomesUS 10,776,471 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,776,471
• Microsoft Corporation v. Edge Networking Systems, LLCAdverse judgment
  PTAB · Mar 25, 2026 · IPR2025-00618 · APJ Nabeel U Khan · IPR · Adverse judgment

  After Patent Owner disclaimed all challenged claims, the Board entered adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b)(2).

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentOther

    “Our rules state that “disclaimer of a claim such that a party has no remaining claim in the trial” is “construed to be a request for adverse judgment.” 37 C.F.R. § 42.73(b). Because Patent Owner has disclaimed all challenged claims and no claims remain in this proceeding, adverse judgment is appropriate. We, therefore, enter judgment adverse to the Patent Owner.” slip op. at 2

  None
  Patents in suitUS 11,695,823
• Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentable
  PTAB · Mar 23, 2026 · IPR2025-00003 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 10, 12, 14, and 16–20 are unpatentable under § 103; the Board denied Patent Owner’s revised motion to amend.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art. RMTA 19. Patent Owner’s declarant, Dr. Villasenor, notes that “obviousness must be viewed from the perspective of one of ordinary skill in the field of information security using cryptographic keys for encryption and decryption of digital data, and my opinions are rendered on the basis of the definition of the ordinary artisan set forth in the Petition in view of that further clarification.” Ex. 2010 ¶ 19. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Expert testimonyOther

    “In reply, Patent Owner substantially repeats its arguments against Petitioner’s reliance on Peterka for the claim 1 content encryption key identifiers requirements. Reply RMTA 8–9 (citing Ex. 1005 ¶ 121; Ex. 2010 ¶¶ 89, 93–95); see RMTA 14–15. We are not persuaded by these arguments for the reasons discussed in Section III.D.2.e)(2) above.” slip op. at 65

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

    “Patent Owner argues that there was no motivation to combine Peterka with Suzuki because Petitioner has argued that “Peterka can already identify content keys by using the allegedly unique sequence numbers or time stamps assigned to each message carrying a single content key.” PO Resp. 41–42 (citing Pet. 25). Patent Owner also challenges motivation to combine Suzuki because it “is not directed to a pay-by-time, pay-per-view, or subscription distribution model, in which a content key grants access to content that different clients must individually decide to purchase in discrete units or increments.” Id. at 36–37. Petitioner responds that, because Peterka disclosed alternative embodiments that did not use sequence numbers or time stamps to identify EMM/ECM messages, one of ordinary skill would have been motivated specifically assign identifications to individual keys as taught in Suzuki. Reply 22 (citing Pet. 26). Petitioner also argues that whether Suzuki was directed to unpurchased content was irrelevant, because Suzuki is cited to show multiple key responses were conventional. Id. at 19–20. Patent Owner does not otherwise specifically address the issue of motivation to combine Peterka, Suzuki, and Bocharov. See generally PO Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Peterka, Suzuki, and Bocharov as proffered by Petitioner with a reasonable expectation of success.” slip op. at 45

  • ScopeMotion to amend, deniedDenied

    “We agree with Petitioner that the substitute claims are broadening. Because the amended wording only requires the key request to be made “in response to detecting” the boundary, rather than “ahead of” the boundary, the request can occur before or after the boundary. This is not a fanciful or unlikely possibility — such delayed requests are specifically contemplated by the ’178 patent: [I]f the packager 104 is unable to obtain a new content encryption key from the WFM 102 prior to the expiration of the current content encryption key, the packager 104 will continue to use the current content encryption key until such time as it is able to obtain a new key from the WFM 102. Ex. 1001, 6:32–37. It should be noted that the fixed period duration for key rotation may be viewed as a "target" period, as the packager 104 may not expire a key on the exact boundary. Ex. 1001, 8:9–11. The key expiration time from the WFM 102 may be viewed as a "suggested" expiration time, as the packager 104 may not be able to expire the key at the exact specified time.” slip op. at 56

  Patent outcomesUS 9,313,178 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,313,178
• Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentable
  PTAB · Mar 23, 2026 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–7, 9, 11–17, and 19 are unpatentable under §103; the revised motion to amend proposing substitute claims 21–36 is denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Board first must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121.” Lectrosonics, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). Accordingly, a patent owner must provide a claim listing reproducing each proposed substitute claim, and must make an initial showing to demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of the earlier filing date is sought); (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.121.” slip op. at 60

  • Expert testimonyOther

    “Accordingly, we agree with Petitioner’s contentions regarding the” slip op. at 28

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 14

  Patent outcomesUS 11,122,313 unpatentable
  Nonecites Phillips · KSR · Graham
  Patents in suitUS 11,122,313
• Google LLC v. Mindbasehq, LLCAll claims unpatentable
  PTAB · Mar 16, 2026 · IPR2021-01252 · APJ Kara L Szpondowski · IPR · Remand

  On remand, claims 14–19, 33–40, and 43–46 were held unpatentable as obvious; the Federal Circuit’s affirmed findings leave claims 1–13, 20–32, 41, and 42 unpatentable as well.

  RulingsRemand decision

  • RemandOther

    “to both cases vacating and remanding in part and affirming in part our Final Written Decisions. Appeal Dec. With respect to Petitioner’s appeals, the Federal Circuit addressed the “dictionary routine” claims (claims 14–19 and 33–40) and the “normalization” claims (claims 43–46). Appeal Dec. 7–14. For the “dictionary routine” claims, the Federal Circuit vacated and remanded, stating that In sum, as Google contends and we now hold, the “dictionary routine” claims can be practiced by use of an already-created dictionary, and do not also require the automatic creation of a dictionary. The Board needs to consider Google’s evidence and argument by applying this construction of the automatically classifying and storing limitation, and using this understanding to determine whether Conlon may, in fact, render the “dictionary routine” claims obvious (and, relatedly, whether its prior distinctions of Conlon may be immaterial). Appeal Dec. 10–11. For the “normalization” claims, the Federal Circuit also vacated and remanded, stating that our “decision to exclude Google’s rebuttal argument and supplemental declaration is based on a clear factual error,” so on remand we “must include evaluation of the evidence and argument Google provided in reply.” Id. at 13–14. With respect to Patent Owner’s cross-appeals, the Federal Circuit affirmed. Id. at 14–16.” slip op. at 3

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

    “The Federal Circuit concluded that Petitioner’s construction of “automatically classifying and storing” (as recited in limitation [14.3]), is correct. Appeal Dec. 8. That is, “the ‘dictionary routine’ claims can be practiced by [the] use of an already-created dictionary, and do not also require the automatic creation of a dictionary.” Id. at 10; see also Reply 7 (the limitation is “directed to the use of a dictionary function to automatically look up words and their syntax”); Appeal Dec. 8 (“nothing about the term . . . would inform a person of ordinary skill in the art that automatic ‘creation’ of a database, in addition to the ‘use’ of an already-created database, is a requirement of the dictionary routine claims”); id. (“the plain and ordinary meaning of the claim language is broad enough to include ‘use’”); id. (agreeing with Petitioner that “the specification describes the ‘dictionary routine’ as the act of looking up words already in the database”); id. at 9 (stating that “[i]t is notable, as well, that the specification nowhere describes automatically creating a dictionary; all instances of creating dictionary entries rely, at least in part, on manual data entry by users”). As directed by the Federal Circuit, we will apply this construction in our analysis.8 Id. 8 Patent Owner argues that the Federal Circuit “cherry-picks” and misinterprets the patents’ specifications, and “ignores the clearly contrary specification language.” PO Remand Br. 4–5, 10; id. at 8 (arguing that that the specification clearly set forth the definition of the claim term, and “the Board must accept term definitions . . . above all external definitions”). We do not consider these arguments on the construction of this limitation, because the Federal Circuit has directed us to proceed under its construction of the limitation. We also agree with Petitioner that the Federal Circuit’s claim construction is “foreclosed from further consideration” under its” slip op. at 17

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

    “We agree with Petitioner that claim 43 is obvious over the combination of Conlon, Miller, and Fong. The Federal Circuit stated, “[i]n this context, ‘normalization’ generally refers to de-duplicating and simplifying database entries (for instance, combining entries for ‘car’ and ‘automobile’).” Appeal Dec. 4 (cited at Pet. Response Br. 5). This is consistent with the disclosure in the ’433 patent. E.g., Ex. 1001, 16:55– 17:24 (discussing, for example, “recogniz[ing] that the differently named data elements in different structures are actually the same data element . . . is referred to as normalizing the names of the same data elements,” “recogniz[ing] that the same named data elements in different structures are actually different data elements . . . is referred to as normalizing the names of the different data elements,” and “normalizing multiple single data elements”). This is also consistent with how Fong describes “normalization.” Ex. 1029, 76 (The “Function” of “Normaliz[ing] the collection of entities” is to “[r]emove redundancies and detect errors”); see also Ex. 1057 ¶ 226. Patent Owner’s arguments that Fong’s normalization is “different” from the normalization described in the ’433 patent does not persuasively rebut Petitioner’s arguments. As Petitioner points out, Patent Owner does not provide a construction for “normalization,” despite claiming that the term is “defined” in the ’433 patent. Pet. Remand Resp. Br. 6; PO Remand Br. 13. Moreover, although Patent Owner purports to identify differences between the ’433 patent and Fong, the “normalization” applied is expressly recited in limitations [43.1.1], [43.1.2], and [43.2], and the subsequent actions taken on those normalized databases (i.e., comparing and recording) are recited in limitations [43.3]–[43.5]. That is, the “normalization” required by the claim is reflected in the claim language itself, and is broader than argued by Patent Owner. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). Patent Owner does not explain how these purported “differences” (e.g., that Fong may require the use of “database keys,” “identifiers,” “entities,” or determining ‘non-key attributes’ from key attributes) impacts the claim language, or Petitioner’s showing. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (A prior art reference “must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect”). For the same reasons, as well as those set forth by Petitioner, we are also not persuaded by Patent Owner’s arguments that each DBMS requires a normalization process that is customized for it. Pet. Remand Resp. Br. 6–7. These arguments by Patent Owner also are not commensurate with the scope of the claim language, which does not recite a DBMS, and generally recites “normalizing” or “normalized” without regard to the DBMS. Id. Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations. After considering the properly presented evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that the combination of Conlon, Miller, and Fong teaches the limitations in claim 43, that one of ordinary skill in the art would have been motivated to combine the teachings of Conlon, Miller, and Fong, and that claim 44 would have been obvious over Conlon, Miller, and Fong. 2. Analysis of Dependent Claims 44–46 Claims 44–46 depend, directly or indirectly, from claim 41. We, likewise, determine whether the combination renders obvious claims 44–46, taking into account the arguments made in Petitioner’s Reply Briefs and Dr. Jansen’s Supplemental Rebuttal Declarations. Petitioner contends that dependent claims 44–46, would have been obvious over Conlon, Miller, and Fong, and provides explanation as to how the prior art teaches each claim limitation. Pet. 84–86; Reply 35–39; Pet. Remand Br. 13–14. Patent Owner does not provide further briefing on dependent claims 44–46. 14 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step2. Patent Owner did not specifically challenge Petitioner’s contentions as” slip op. at 31

  • Strike new argumentNew argument disregardedDecided for petitioner

    “Patent Owner’s arguments do not undermine Petitioner’s showing. Patent Owner did not specifically challenge Petitioner’s contentions as to the sufficiency of Conlon’s disclosure for claim 1410 in the Patent Owner Response. In the Sur-replies, Patent Owner argues that the claim requires that at least some relationships are created “automatically,” and “these automatic embodiments . . . are represented in this group of claims.” Sur-reply 9. Along these lines, in the additional briefing Patent Owner argues that Conlon does not teach “automatic,” but merely teaches “semi-automatic.” PO Remand Br. 9–10. The crux of Patent Owner’s argument, however, is that the Federal Circuit did not properly construe the limitation, and ignored certain disclosures in the ’433 (and ’680) patent. Id. at 10–11; see Pet. Remand Resp. Br. 1–4; PO Remand Resp. Br. 4–5. The Federal Circuit held that “the dictionary routine claims can be satisfied by mere use of a lexical database, and do not also require the automatic creation of additional definitions.” Appeal Dec. 10. Moreover, the statements from Conlon that Patent Owner relies upon relate to creating a database, not using the database. See id. As discussed above, on remand we are directed to apply the Federal Circuit’s construction. Patent Owner does not explain 10 As discussed in the original Final Written Decisions, Patent Owner raised several arguments that generally applied to all the claims, challenging, for example, the level of ordinary skill in the art, whether Conlon, Miller, and Beckwith were analogous art, and several general arguments relating to Conlon and the motivation to combine Conlon with a DBMS. See Final Dec. 14–23, 25–27. We were not persuaded by Patent Owner’s arguments; the Federal Circuit affirmed, determining that our findings were supported by substantial evidence. Appeal Dec. 14–16. why Petitioner’s contentions are not persuasive in light of the Federal Circuit’s construction of this limitation. In addition, Patent Owner argues in the Sur-replies that “[c]laims 14– 19 are not disclosed by the proffered prior art” and cites to paragraphs 78–83 of the Ranka Rebuttal Declarations. Sur-reply 10. As discussed in the original Final Written Decisions, Patent Owner’s reliance on six paragraphs of Dr. Ranka’s Rebuttal Declarations is an improper incorporation by reference, as Patent Owner did not discuss that testimony or further elaborate on these arguments in the Sur-replies. 37 C.F.R. § 42.6(a)(3); Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9–10 (PTAB Aug. 29, 2014) (informative); see, e.g., Final Dec. 37–39, 45, 48–50, 52. Therefore, we will not consider arguments that are not made in the Sur-replies, but are instead improperly incorporated by reference to the cited paragraphs in Dr. Ranka’s Rebuttal Declarations. Accordingly, after considering the evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that Conlon teaches limitation [14.3], and that claim 14 would have been obvious over Conlon.” slip op. at 21

  Patent outcomesUS 6,665,680 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,665,680
• Google LLC v. Mindbasehq, LLCAll claims unpatentable
  PTAB · Mar 16, 2026 · IPR2021-01251 · APJ Kara L Szpondowski · IPR · Remand

  On remand, claims 14–19, 33–40, and 43–46 were held unpatentable as obvious over Conlon alone or Conlon, Miller, and Fong; the affirmed unpatentability of claims 1–13, 20–32, 41, and 42 remains.

  RulingsRemand decision

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

    “automatically classifying and storing” (as recited in limitation [14.3]), is correct. Appeal Dec. 8. That is, “the ‘dictionary routine’ claims can be practiced by [the] use of an already-created dictionary, and do not also require the automatic creation of a dictionary.” Id. at 10; see also Reply 7 (the limitation is “directed to the use of a dictionary function to automatically look up words and their syntax”); Appeal Dec. 8 (“nothing about the term . . . would inform a person of ordinary skill in the art that automatic ‘creation’ of a database, in addition to the ‘use’ of an already-created database, is a requirement of the dictionary routine claims”); id. (“the plain and ordinary meaning of the claim language is broad enough to include ‘use’”); id. (agreeing with Petitioner that “the specification describes the ‘dictionary routine’ as the act of looking up words already in the database”); id. at 9 (stating that “[i]t is notable, as well, that the specification nowhere describes automatically creating a dictionary; all instances of creating dictionary entries rely, at least in part, on manual data entry by users”). As directed by the Federal Circuit, we will apply this construction in our analysis.8 Id. 8 Patent Owner argues that the Federal Circuit “cherry-picks” and misinterprets the patents’ specifications, and “ignores the clearly contrary specification language.” PO Remand Br. 4–5, 10; id. at 8 (arguing that that the specification clearly set forth the definition of the claim term, and “the Board must accept term definitions . . . above all external definitions”). We do not consider these arguments on the construction of this limitation, because the Federal Circuit has directed us to proceed under its construction of the limitation. We also agree with Petitioner that the Federal Circuit’s claim construction is “foreclosed from further consideration” under its slip op. at 17

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

    “combination of Conlon, Miller, and Fong. The Federal Circuit stated, “[i]n this context, ‘normalization’ generally refers to de-duplicating and simplifying database entries (for instance, combining entries for ‘car’ and ‘automobile’).” Appeal Dec. 4 (cited at Pet. Response Br. 5). This is consistent with the disclosure in the ’433 patent. E.g., Ex. 1001, 16:55– 17:24 (discussing, for example, “recogniz[ing] that the differently named data elements in different structures are actually the same data element . . . is referred to as normalizing the names of the same data elements,” “recogniz[ing] that the same named data elements in different structures are actually different data elements . . . is referred to as normalizing the names of the different data elements,” and “normalizing multiple single data elements”). This is also consistent with how Fong describes “normalization.” Ex. 1029, 76 (The “Function” of “Normaliz[ing] the collection of entities” is to “[r]emove redundancies and detect errors”); see also Ex. 1057 ¶ 226. Patent Owner’s arguments that Fong’s normalization is “different” from the normalization described in the ’433 patent does not persuasively rebut Petitioner’s arguments. As Petitioner points out, Patent Owner does not provide a construction for “normalization,” despite claiming that the term is “defined” in the ’433 patent. Pet. Remand Resp. Br. 6; PO Remand Br. 13. Moreover, although Patent Owner purports to identify differences between the ’433 patent and Fong, the “normalization” applied is expressly recited in limitations [43.1.1], [43.1.2], and [43.2], and the subsequent actions taken on those normalized databases (i.e., comparing and recording) are recited in limitations [43.3]–[43.5]. That is, the “normalization” required by the claim is reflected in the claim language itself, and is broader than argued by Patent Owner. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). Patent Owner does not explain how these purported “differences” (e.g., that Fong may require the use of “database keys,” “identifiers,” “entities,” or determining ‘non-key attributes’ from key attributes) impacts the claim language, or Petitioner’s showing. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (A prior art reference “must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect”). For the same reasons, as well as those set forth by Petitioner, we are also not persuaded by Patent Owner’s arguments that each DBMS requires a normalization process that is customized for it. Pet. Remand Resp. Br. 6–7. These arguments by Patent Owner also are not commensurate with the scope of the claim language, which does not recite a DBMS, and generally recites “normalizing” or “normalized” without regard to the DBMS. Id. Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations.” slip op. at 31

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations.” slip op. at 32

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

    “4. Summary of Ground 1 Having considered the Graham factors,11 including the level of ordinary skill in the art, the scope and content of the prior art, and the differences between the prior art and the challenged claims, we are persuaded, based on the current record, that Petitioner has shown, by a preponderance of the evidence, that claims 14–19 and 33–40 would have been obvious over Conlon.” slip op. at 24

  Patent outcomesUS 6,510,433 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,510,433
• Qualcomm Incorporated v. Cobblestone Wireless, LLCSome claims unpatentable
  PTAB · Mar 5, 2026 · IPR2024-01336 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–4, 6–9, 24, and 25 are unpatentable; claims 10, 13, 14, 17, and 21–23 were not shown unpatentable, principally due to missing limitations or insufficient motivation to combine.

  RulingsFinal written decision

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

    “information” should be given its plain and ordinary meaning as “data,” and that Patent Owner’s narrower construction of “first information” and “second information” lacks sufficient support in the intrinsic record. We agree with Petitioner that the ’802 patent Specification defines “information” as data when it uses the phrase “information (i.e., data).” See Ex. 1001, 5:60–62 (“Information (i.e., data) to be transmitted may be received in a baseband digital system 250, such as a wireless digital baseband processor.” (emphasis added)), 11:30–32 (“In this example, the signals 911 and 912 carry the same information (data).” (emphasis added)). As the Federal Circuit has explained, a “specification’s use of ‘i.e.’ signals an intent to define the word to which it refers.” Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009). slip op. at 13

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

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

    “argument based on Fernandez alone, we find that Petitioner has not provided a sufficient evidentiary basis to support a motivation to remove the amplification from each of Fernandez’s signal generators 10A-10E and add a single power amplifier instead. See Pet. 76–77 Ex. 1003 ¶ 235. Petitioner’s only rationale for this modification to Fernandez is that “[a] single amplifier has several advantages compared to multiple amplifiers, including lower complexity, a single (vs. multiple) potential point of failure, and lower cost,” and that one of ordinary skill “would have found a single amplifier to be a simple matter of design preference.” Pet. 76–77. Dr. Almeroth simply repeats these cursory allegations without providing any further explanation or evidentiary support. Ex. 1003 ¶ 235. Moreover, Dr. Cooklev provides credible testimony that replacing Fernandez’s amplification in signal generators 10A–10E with a single amplifier would not necessarily have the advantages that Petitioner suggests. See Ex. 2013 ¶¶ 99, 104–105. For example, Dr. Cooklev testifies that a single amplifier would need to have a wider bandwidth than the multiple amplifiers used in Fernandez, which could cause potential stability issues. Id. ¶ 105. According to Dr. Cooklev, this wider bandwidth would require more circuit elements, and thus would not provide the reduction in space usage and power consumption that Petitioner asserts. Id. According to Dr. Cooklev, Montojo also points to several “substantial, and potentially impractical, drawbacks” of using a single amplifier for multiple signal generators, including power constraints imposed by spectral emission requirements and on-board battery capacity. Id. ¶ 104 (citing Ex. 1006 ¶¶ 7– 8). In light of this testimony, which we find credible, Petitioner has failed to provide sufficient explanation or evidence to support its assertion that one of ordinary skill would have found it obvious to replace the multiple amplifiers in Fernandez’s signal generators with a single amplifier.” slip op. at 65

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedOther

    “We find credible and agree with Dr. Cooklev’s testimony that the predistortion signals from tables 17-1 and 17-2 “are cancelled out by Suzuki’s amplifier” 28. Ex. 2013 ¶ 50. Dr. Cooklev supports his opinion by referring to paragraph 1 of Suzuki, which states that Suzuki’s invention is directed to “a multi-band lookup table type predistorter” (such as the one implemented using lookup tables 17-1 and 17-2 in Figure 6) that “compensates for a distortion of a power amplifier.” Ex. 2013 ¶ 54; Ex. 1004 ¶ 1. Dr. Cooklev’s opinion is also supported by paragraph 3 of Suzuki, which explains that a conventional digital predistorter uses a lookup table “for linearizing non-linear characteristics of an amplifier.” Ex. 1004 ¶ 3; Ex. 2013 ¶ 54. Dr. Cooklev further supports his opinion by relying on Suzuki’s disclosure in paragraph 46 that power amplifier 28 is “subject to distortion compensation” by the predistorter, and that distortion components in the signal output by the amplifier are canceled by “distortion compensation data [that] are read out from the lookup tables 17-1 and 17-2 and provided to the adders 13-1 and 13-2, respectively.” Ex. 1004 ¶ 46; Ex. 2013 ¶ 54. And, Dr. Cooklev’s opinion is supported by Suzuki’s disclosure in paragraph 47 that the distortion compensation added by adders 13-1 and 13-2 add the distortion compensation data from lookup tables 17-1 and 17-2 “to perform distortion compensation (addition of predistortion)” to “signals to be transmitted.” Ex. 1004 ¶ 47; Ex. 2013 ¶ 54. Petitioner agrees that the distortion compensation data from lookup tables 17-1 and 17-2 “are added to the respective frequency band from” input signal ST “in order to predistort the output signal, which is then transmitted,” and does not dispute that the distortion compensation data from lookup tables 17-1 and 17-2 is ultimately cancelled out by the distortion created by amplifier 28. Pet. Reply 8. In light of the above evidence, we agree with Patent Owner that Suzuki’s distortion components from lookup tables 17-1 and 17-2 in Figure 6 (which Petitioner relies on for the first and second digital signals in limitations 10a and 10b) are cancelled out by the distortion created by power amplifier 28 before the signal is ultimately transmitted. We agree with Petitioner that these first and second digital signals include data in the form of distortion compensation data. However, because these signals are cancelled by the distortion from amplifier 28 before transmission, the data from these signals is never transmitted. Thus, the first and second digital signals identified by Petitioner (the distortion compensation data from lookup tables 17-1 and 17-2) do not comprise data “to be transmitted,” as limitations 10a and 10b require.” slip op. at 35

  Patent outcomesUS 7,924,802 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,924,802

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.