• Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23

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

    “Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner 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.” Id.” slip op. at 32

  Patent outcomesUS 7,916,180 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,916,180
• Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentable
  PTAB · Jul 1, 2026 · IPR2025-00222 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1, 2, 4, 5, 8–11, 13, and 14 are unpatentable over Yu and Miyazaki; claims 15, 16, and 19 were not shown unpatentable over Matsushima.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “at, and before, the earliest claimed priority date of the ’158 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2–3 years of experience in digital imaging systems,” adding that “[l]ess experience may be sufficient with additional education, and likewise, less education may be sufficient with additional work experience.” Pet. 6–7 (citing Ex. 1003 ¶¶ 16–18). Patent Owner does not offer a competing definition or dispute Petitioner's articulation. Based on the entire record, we adopt Petitioner’s characterization of the level of skill for one of ordinary skill in the art because that characterization, we find, is consistent with the ’158 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “We determine that the claims require a per-channel determination of integration time—that is, an integration time arrived at for each sensor or channel individually—and cannot be satisfied by a single global value merely applied uniformly across the sensors. We do not, however, read the independent claims to require that the per-channel integration times differ from one another.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “We adopt the definition clearly and unambiguously set forth in the specification, which was likewise adopted by the Court in the related litigation. See Pet. 7–8, 55; Pet. Reply 1–2 (district court construing the term to mean “the time the image sensor collects and integrates signal from the scene”). The specification states that the integrated photo-charge “is directly related to the time the image sensor collects and integrates signal from the scene,” and that “[t]his is known as integration time.” Ex. 1001, 4:4–7. Accordingly, the ’158 patent demonstrates that the inventors indisputably acted as a lexicographer for the term “integration time.”” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “We construe “during a frame” to mean the period during which data for a single frame of an image is captured. The limitation is satisfied where the per-channel integration time is effectuated during the frame; it does not require that the integration time be re-determined mid-frame, nor does it require actuation of a “charge integration switch.” The specification’s only use of the phrase confirms this reading: “each camera channel is controlled during a frame under an independent integration time.” Ex. 1001, 3:45–50. Consistent with that usage, the specification describes selecting an integration time for each channel and then integrating the photo-signal “within a single frame of data,” and describes placing the charge-integration switch in a state to allow charge to accumulate for the selected period and then transferring the accumulated charge upon completion of the integration period. Id. at 4:51–54, 11:3–18. We decline Patent Owner’s proposal to require in-frame actuation of a charge-integration switch, for the same reason we decline to import that structure into “integration time.” We also decline to read the phrase to require mid-frame re-determination of the integration time, because the patent’s own embodiment selects an integration time and then integrates charge during the frame under that selected time. Ex. 1001, 4:51–54, 11:3– 18. So construed, “during a frame” is not redundant of the independentclaim limitation: it adds that the per-channel control occurs within a single frame (intrascene), as distinct from adjustment from one frame to the next (interscene).” slip op. at 15

  Patent outcomesUS 9,232,158 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,232,158
• Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentable
  PTAB · May 6, 2025 · IPR2024-00083 · APJ Meredith C Petravick · IPR · Final written decision

  Claims 1–4, 6, 7, 9–13, 15, and 16 are unpatentable as obvious over Socwell, Magid, and Sclater; claim 8 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “Prior to institution, Patent Owner argued that we should dismiss the Petition because it identifies the Petitioner as the California Corporation and not the Delaware Corporation. Paper 6, 23–24 (Preliminary Response); Paper 9, 1 (Preliminary Sur-Reply); Paper 12 (Conference Call Transcript); Paper 18 (Request for Director Review). In our Decision on Institution, we found Patent Owner’s argument, as applied to the facts of this proceeding, to be unpersuasive and corrected the caption to correctly reference Petitioner as the California Corporation, essentially replacing the “Inc.” with “LLC” in Petitioner’s name. Paper 13, 14–17; see also Paper 21 (Decision Denying Director Review).” slip op. at 3

  • BurdenOther

    “We find Dr. Giachetti’s testimony, alone, insufficient to establish by a preponderance of the evidence that a POSA, given Tollkien and Sclater, would have been motivated to look to one-way sprag-type clutches to solve the problem of unexpected forward motion of the running belt of a treadmill. Without a reference, like Magid, teaching that it was known to use a one-way clutch mechanism on a treadmill to prevent unexpected forward motion, we are persuaded by Patent Owner that Petitioner’s combination is impermissibly based in hindsight. See PO Resp. 42–47. After considering Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has failed to show by a preponderance of the evidence that claim 1 is unpatentable over Tollkien and Sclater.” slip op. at 42

  • ExcludeMotion to exclude, deniedGranted in part

    “Declaration of Robert Giachetti, Ph.D. P.E) under FRE 401–402. Mot. 4 (citing FRE 401–402 in the heading). Patent Owner’s Motion, however, includes no substantive arguments directed to whether Giachetti Declaration is relevant admissible evidence or irrelevant inadmissible evidence. Mot. 4– 7. In its Reply, Patent Owner states: “While the Motion to Exclude does not expressly detail Exhibit 1036’s lack of relevance under FRE 401–402, the irrelevance is plain. Petitioner’s provision of new arguments in Reply, which is not allowed, renders such arguments irrelevant.” PO Reply to Mot., 1, n.1. Patent Owners argument is unpersuasive because it is a mere assertion without adequate explanation. The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). Patent Owner’s mere assertion does not meet Patent Owner’s burden to show that Exhibit 1036 is irrelevant inadmissible evidence.” slip op. at 52

  • Strike new argumentNew argument consideredDecided for petitioner

    “8 Patent Owner argues that we should not consider Petitioner’s Reply and Exhibits 1036 and 1051 because the Reply and Exhibits relate to new arguments which should have been made in the Petition. PO Sur-Reply 4–5. We do not agree. Petitioner may rely upon Exhibits 1036 and 1051 to response to arguments raised in the Patent Owner’s Response. See PO Resp. (a ); Axonics, Inc. v. Medtronics, Inc., 75 F.4th 1374, 1380–1382 (Fed. Cir. 2023) (“we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.”)” slip op. at 16

  Patent outcomesUS 11,465,005 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,465,005
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

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

    “4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23

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

    “predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentable
  PTAB · Jun 13, 2024 · IPR2023-00242 · APJ David C Mckone · IPR · Final written decision

  Claims 14–18 are unpatentable as obvious over either instituted ground; claims 1–13 were not shown unpatentable because the petitioner failed to prove the challenged combinations met the claims.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “3. “the rendered first webpage” Claim limitation 1dii recites “replacing the first and second objects within the 3D space with a window within a two-dimensional (2D) space in response to receiving the interaction, wherein the window includes the rendered first webpage.” Petitioner does not propose a construction for the term “the rendered first webpage” in the Petition. Pet. 13–14. Nevertheless, Patent Owner contends in the Patent Owner Response that “‘the rendered first webpage’ is the webpage that was requested by the user via the ‘first input’ from which the ‘first image’ was captured.” PO Resp. 13. As Petitioner summarizes, “[a]ccording to Patent Owner, ‘the rendered first webpage’ presented in 2D space ‘is the version that was previously received and rendered (e.g., stored in memory) from which the first image was captured. It is not a ‘live’ webpage from the Internet.’” Reply 6. Despite not proposing a construction in the Petition, Petitioner, in the Reply, asks us to construe “the rendered first webpage” to include either the previously received and rendered first webpage or a new (so called “live”) version of the first webpage rendered in response to receiving the user interaction of claim limitation 1dii. Reply 6–7. The plain and ordinary meaning of claim 1 supports Patent Owner’s argument. “To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Here, claim 1 refers to replacing the first and second objects with “the rendered first webpage,” which implies that the objects are not replaced with just any version of the first webpage. “Rendered” is in the past tense, suggesting a webpage that previously has been rendered. This is a clear reference to limitation 1ci, “rendering the first and second webpages.” Dr. Fuchs’ testimony is instructive. According to Dr. Fuchs, a skilled artisan “would have known that webpage rendering was a ubiquitous process for converting raw HTML code received from a web server into visible content.” Ex. 1003 ¶ 104. According to Dr. Fuchs, “[w]ebpage rendering is a core functionality of virtually all web browsers, and it would have been obvious to a [person of ordinary skill in the art] that rendering is a prerequisite step to obtaining ‘screen snapshots of actual web pages,’ as explained in Robertson’s companion Data Mountain paper.” Id. ¶ 105 (citing Ex. 1030, 5). Dr. Fuchs testifies that a skilled artisan “would have understood that Robertson’s 3D-GUI captures images of the rendered (first/second) webpages to obtain the webpage images on the object thumbnails.” Id. ¶ 107. Similarly, Dr. Fuchs testifies that “Gettman’s technique involves ‘cach[ing]’ ‘bitmap screenshots’ (captured first/second images) of rendered (first/second) webpages in local memory.” Id. ¶ 108. Here, as Dr. Fuchs reads claim limitations 1ci and 1cii, in step 1ci, a” slip op. at 20

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

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65

  Patent outcomesUS 8,881,048 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,881,048
• Netflix, Inc. / Hulu, LLC v. Divx, LLCSome claims unpatentable
  PTAB · Sep 27, 2021 · IPR2020-00648 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 16, 17, and 19 are unpatentable over Pyle and Marusi; claims 1–6, 8–10, 13, and 14 were not shown unpatentable under the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we found that Petitioner’s proposal was consistent with the level of ordinary skill in the art reflected by the prior art of record and we preliminarily adopted Petitioner’s unopposed position. Inst. Dec. 8–9 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in adaptive streaming and content management” or “a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in adaptive streaming or content management” and that “[a] person with less education but more relevant practical experience may also meet this standard.” See Inst. Dec. 8–9 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (alteration in original).” slip op. at 10

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

    “the case law makes clear that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising’” unless an “extremely limited” exception applies. See Convolve, Inc. v. Compaq Computer Corp., 812 F.3d 1313, 1321 (Fed. Cir. 2016) (quoting KCJ Corp., 223 F.3d at 1356; Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)). Here, claim 1 recites the transitional phrase “comprising,” meaning it is open-ended, and, therefore, the usual meaning of “a” as “one or more” would have been expected absent an extremely limited exception. In considering whether an exception applies, our review of the ’515 patent fails to indicate that the patentee intended the phrase to mean anything other than the usual meaning of “one or more.” Patent Owner asserts that “[t]he plain language of the claim clearly indicates only a single [list] is used to list multiple assets” and quotes two portions of the Specification, which state “a list of assets that satisfies criteria” and “a list of assets to which a . . . device is granted access.” PO Sur-reply 12–13 (quoting Ex. 1001, 12:60–67) (citing Ex. 1001, 2:23–34, 3:1–5, 4:21–23, 17:59–66). Although claim 1 of the ’515 patent recites “assets” in the plural, we fail to see how that conveys that the term “a” would have been understood as limited to “one.” Notably, neither party has identified any inconsistency, in the claims or other portions of the Specification (including the portions quoted and/or cited by Patent Owner), resulting from construing “a” as “one or more.” And, we find that there is no reason why the claims could not be met under the construction of “a” as “one or more.” Thus, we find that the ’515 patent does not “evince [ ] a clear intent to limit a or an to one.” See Convolve, 812 F.3d at 1321 (internal quotations omitted). Accordingly, we construe the term “a” in “a list of assets” as “one or more” such that the phrase “a list of assets” means “one or more list of assets.” Considering next the phrase “the list of assets” recited in limitation 1[e], the parties do not dispute that the use of the term “the” means that “the list of assets” refers back to the one or more list of assets retrieved in limitation 1[d] and discussed above. See PO Resp. 1–2; see generally Pet. Reply; PO Sur-reply 5. Similarly, the parties do not dispute that the phrase “the filtered list of assets,” recited in limitation 1[e], refers back to the list of assets resulting from the filtering step of limitation 1[d]. See PO Resp. 3–4; see generally Pet. Reply; PO Sur-reply 5. We agree with the parties that each of these phrases refers back to the previous instance of the recited terms.” slip op. at 15

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

    “motivated to combine these teachings for several reasons. Pet. 21. First, Petitioner contends “the combination is the use of a known technique to improve similar devices because using the capabilities of a client device to choose appropriately formatted content was a well-known technique.” Id. Petitioner asserts that “implementing Marusi’s techniques for organizing multiple representations and choosing among them based upon a client device’s capabilities would predictably function in Pyle’s system, which similarly seeks to target video content based on particular client device types and parameters.” Id. (citing Ex. 1004, 10:57–11:10; Ex. 1003 ¶ 147). Second, Petitioner argues that “detecting a client device’s capabilities based upon client device identifiers was a common and known solution to the problem of supplying information in a format usable by the client device.” Pet. 21. Petitioner contends that one of ordinary skill in the art “would have found it obvious to combine Marusi’s teachings with Pyle because it is one solution, from a finite number of known, and predictable solutions.” Id. (citing Ex. 1003 ¶ 148). Third, with respect to Marusi’s databases, Petitioner contends “[t]he combination of Marusi’s databases to manage the data in Pyle’s system uses a known technique to improve similar systems.” Pet. 21. In particular, Petitioner asserts that one of ordinary skill “would have been motivated to combine Marusi’s database teachings with Pyle because Pyle teaches storing the same content in multiple, different representations.” Id. at 21–22 (citing Ex. 1004, 9:64–10:21). Further, Petitioner argues that “[u]sing a database to store and manage multiple representations of the same data, or even to simply store voluminous data for retrieval, was an extremely well-known and common application of databases.” Id. at 22 (citing Ex. 1003 ¶ 149). Additionally, Dr. Reader opines that one of ordinary skill in the art “would have understood that the teachings of Pyle and Marusi were complementary, and therefore would have been motivated to combine Pyle with Marusi to enhance the efficiency of generating, storing, and delivering multimedia content tailored to the capabilities of particular playback devices.” Ex. 1003 ¶ 150.” slip op. at 27

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

    “Patent Owner that Petitioner and Dr. Reader fail to explain why one of ordinary skill in the art would have understood that Pyle generates a top level index file by placing a manifest file in memory for transmission to a client device. Pet. 35; see Ex. 1003 ¶ 184. “Opinions expressed without disclosing the underlying facts or data may be given little or no weight.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“Consolidated TPG”), 40–41, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (citing Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)). Here, there is no explanation or reason given for Petitioner’s assertion or Dr. Reader’s testimony and the connection, if any, is not otherwise apparent. Further, aside from Dr. Reader’s unexplained position, Petitioner has not pointed us to any evidence of record supporting the argument that one of ordinary skill in the art would have understood that placement of a file in memory for transmission teaches generating the file as recited in limitation 1[f]. Accordingly, without any explanation whatsoever, the record is without a sufficiently supported basis upon which to make that finding, resulting in a failure of proof by Petitioner with respect to claim 1.11 10 We also note that Petitioner’s Reply does not seek to add a new argument for our consideration; rather, Petitioner’s Reply asserts, albeit incorrectly, that the argument was raised in the Petition. See Pet. Reply 15. 11 Although Petitioner’s Reply sets forth several arguments in response to other arguments raised in Patent Owner’s Response, those additional arguments do not address to this aspect of limitation 1[f]. See, e.g., Pet. c. Dependent Claims 4, 5, 8–10, and 14 Petitioner contends that the combination of Pyle and Marusi would have rendered the subject matter of claims 4, 5, 8–10, and 14 obvious to one of ordinary skill in the art. Pet. 36–41. Claims 4, 5, 8–10, and 14 depend from claim 1 and, therefore, include limitation 1[f], as discussed above. Accordingly, for the same reasons discussed with respect to claim 1, Petitioner’s analysis of these claims suffers from the same deficiency.” slip op. at 34

  Patent outcomesUS 9,998,515 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,998,515
• Intel Corporation v. VLSI Technology LLCSome claims unpatentable
  PTAB · Jan 12, 2021 · IPR2019-01194 · APJ Minn Chung · IPR · Final written decision

  Claims 1 and 2 are unpatentable over Kim and Lee under § 103; Petitioner did not prove claims 4, 5, and 7 unpatentable because the combination was not adequately supported.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “determine that Petitioner has demonstrated sufficiently that the combination of Kim and Lee teaches “a mode indicator generator for generating a mode indicator that indicates a desired mode of the power gated circuit,” as recited in claim 1, and has articulated sufficient reasoning with rational underpinning for combining Kim and Lee to arrive at the subject matter of this claim limitation. c. Conclusion on Claim 1” slip op. at 64

  • Expert testimonyOther

    “F. Testimonial Evidence Petitioner relies on two Declarations from David Harris, Ph.D. in” slip op. at 9

  Patent outcomesUS 8,081,026 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,081,026
• Syrinix, Inc. v. Blacoh Fluid Control, Inc.Some claims unpatentable
  PTAB · May 22, 2019 · IPR2018-00414 · APJ Frederick C Laney · IPR · Final written decision

  Claims 1–6, 10, 12, and 14 are unpatentable; the motion to amend is granted for substitute claims 22 and 24.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundDecided for patent owner

    “We find the above remarks made during prosecution of the ’553 patent by the applicant to be an unmistakable disavowal of pressure fluctuations caused by a leak in a pipe from the scope of “dynamic transient pressure.” Accordingly, we agree with Patent Owner that the applicant narrowed the scope of “dynamic transient pressure” to exclude transient pressures caused by pipeline leaks.” slip op. at 18

  • Skill levelSkill level board ownOther

    “formulation regarding the level of ordinary skill in the art, and instead found the cited references to be representative of the level of ordinary skill in the art. Inst. Dec. 9–10 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be evidenced by the cited references themselves)). The parties have not expressed any disagreement with this finding, nor have they suggested a more definitive characterization of the level of ordinary skill in the art is necessary to resolve a disputed issue. Accordingly, for purposes of this Decision we again treat the cited references as being representative of the level of skill in the art. However, the factual findings and legal conclusions set forth herein would” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “claims, “the burden of persuasion ordinarily will lie with the petitioner to show that any proposed substitute claims are unpatentable by a preponderance of the evidence.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, slip op. at 4 (PTAB Feb. 25, 2019) (Paper 15) (precedential). Before we evaluate the patentability of Patent Owner’s proposed substitute claims, we first must consider whether the proposed claims satisfy the threshold statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.221. Id. at 4–10. Accordingly, Patent Owner must demonstrate (1) the amendment responds to a ground of unpatentability involved in the trial; (2) the amendment does not seek to enlarge the scope of the claims of the patent; (3) the amendment proposes a reasonable number of substitute claims; and (4) the amendment does not introduce new subject matter and has written description support in the original disclosure. Id.” slip op. at 74

  Patent outcomesUS 7,219,553 mixed
  Claim constructioncites KSR · Graham
  Patents in suitUS 7,219,553
• Qualcomm Incorporated / Qualcomm Atheros, Inc. v. Parkervision, Inc.Some claims unpatentable
  PTAB · Mar 7, 2017 · IPR2015-01828 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 21, 281, 283–286, 288, 289, and 293 are unpatentable as obvious over Nozawa and Philips 4052; claims 25, 26, 363–366, 368, 369, and 373 were not proven unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Qualcomm contends, citing Dr. Larson’s testimony, that one of ordinary skill in the art as of October 1998 would possess, at a minimum, either (a) a master of science degree in electrical engineering and two or more years of experience in radio frequency circuit design, or (b) a bachelor of science degree in electrical engineering with three or more years of experience with the design and development of RF circuits. Pet. 10–11 (citing Ex. 1002 ¶¶ 31–39). ParkerVision does not contest Qualcomm’s designation of the level of ordinary skill in the art as of the date of the invention. Accordingly, we adopt Qualcomm’s proposed level of ordinary skill in the art.” slip op. at 11

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

    “During the trial, ParkerVision asserted that we should maintain our construction of “harmonic” (PO Resp. 19–23), and Qualcomm did not address the adopted construction. With respect to the remaining terms, ParkerVision argues that none of these terms are material to the remaining dispute between the parties, which is focused on the “harmonic” limitation. Id. at 24–25. On this, we agree. As the remaining terms are not material to the parties’ dispute, we decline to construe them further. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7

  • Expert testimonyOther

    “Regarding the Maas equation, ParkerVision directs us to a portion of Dr. Larson’s deposition, in which Dr. Larson used the Maas equation to calculate the harmonics produced by a mixer, given certain assumed inputs supplied by ParkerVision’s counsel (an input signal of 100 kHz and an LO input of 1 MHz). Id. at 29–31 (citing Ex. 2001, 177–87). ParkerVision notes that Dr. Larson’s calculations produced -0.9, 3.1, and -4.9 MHz as the first three harmonics, which are not integer multiples. PO Resp. 31. Thus, ParkerVision argues, the circuit of Nozawa does not necessarily produce a plurality of harmonics, defined by the ’940 patent as being integer multiples of the fundamental frequency. Id. Qualcomm argues that the Maas equation “shows that Nozawa will necessarily produce the required ‘integer multiple’ harmonics for many input frequencies.” Pet. Reply 4 (emphasis added). According to Qualcomm, it is not required to show that Nozawa will produce integer multiple harmonics for all operating conditions; rather, it is only relevant that Nozawa could be operated to produce the harmonics. Id. Regarding Dr. Larson’s calculations during his deposition, Qualcomm contends that even using the assumed inputs provided by ParkerVision, the Maas equation shows that the 35th and 37th harmonics are 35.1 and -36.9 MHz, respectively, which are integer multiples of the fundamental frequency of 0.9 MHz. Id. at 7. Qualcomm also notes that selecting slightly different input frequencies for the Maas equation will produce much lower integer multiple harmonics, such as at the 7th and 9th harmonics. Id. at 8. The parties’ disagreements over the various inputs and permutations of the Maas equation aside, one point appears to be beyond dispute: under some conditions, but not all conditions, the Maas equation shows that Nozawa’s structure will produce a periodic signal that contains integer multiples of the fundamental frequency. In other words, the structure of Nozawa is capable of producing a signal that satisfies the limitations of the claim. Qualcomm argues that this is sufficient to show unpatentability. Pet. Reply 13 (citing Gen. Electric Co. v. Jewel Incandescent Lamp Co., 326 U.S. 242, 248–49 (1945)). On this point, we agree. Claim 21 and its dependents are apparatus claims; as such, they “cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). In other words, the “periodic signal” limitations, which are directed to the transitory electrical signals produced by the apparatus, cannot give rise to patentability so long as the underlying apparatus has been shown to be capable of generating those signals. Here, it is undisputed that Nozawa’s circuit is capable of generating a periodic signal having a plurality of harmonics, wherein those harmonics are integer multiples of the fundamental frequency. Furthermore, we agree with Qualcomm that Nozawa’s low-pass filter is capable of isolating one or more of those harmonics, as desired.” slip op. at 16

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

    “Qualcomm contends that “Nozawa and Philips 4052 both provide architectures and methods for upconversion that can be used for a transmitter.” Pet. 21. Indeed, as Qualcomm observes, the 74HC4052 chip described in Philips 4052 is used in Nozawa. Id. at 28–29. We agree with Qualcomm that a person of ordinary skill in the art would have had reason to look to the disclosure of Philips 4052 to learn more about the operation of the 74HC4052 chip disclosed in Nozawa. ParkerVision does not challenge that a person of ordinary skill in the art would have combined Nozawa with Philips 4052.” slip op. at 12

  Patent outcomesUS 6,091,940 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,091,940
• Honeywell International Inc. v. Allure Energy, Inc.Some claims unpatentable
  PTAB · Dec 6, 2016 · IPR2015-01248 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 5, 20, 22–25, and 30 are unpatentable as obvious over Yamashita and Shamoon; claims 2–4, 6–8, and 19 were not proven unpatentable.

  RulingsFinal written decision

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

    “We agree with Petitioner that Patent Owner is attempting to improperly limit the construction. As we explained in our Decision on Institution, we declined to limit “comparison” to a particular type of evaluation, and by our construction, we did not find that the “focus” of the “comparison” is to identify “any dissimilarity” as Patent Owner contends. See Inst. Dec. 9. Indeed, as evidenced by the dictionary definitions cited by Patent Owner and that we relied upon, determining dissimilarities is not the “focus” of the plain and ordinary meaning of “comparison” that we adopted. See Inst. Dec. 9 (citing Ex. 2003 (defining “comparison” as “the act of looking at things to see how they are similar or different” and “the act of suggesting that two or more things are similar or in the same category”)); see also Ex. 2011 (defining “comparison” as “the representing of one thing or person as similar to or like another” and “an examination of two or more items to establish similarities and dissimilarities”).” slip op. at 6

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

    “Here, we agree with Petitioner that the plain language of the claim is sufficient and no construction is necessary for this term. The claim language already establishes that there are two user profiles, each is associated with a particular and different mobile device, and the profiles include “information to alter an operating condition of the network device according to a preference of a [first/second] user.” The claim already addresses what attributes the user profile must have. We see no support in the claim language or specification for Patent Owner’s additional requirements that the profiles be “individual” and “include information unique to each user.”” slip op. at 9

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

    “v. Summary as to Claims 1, 20, 22–25, and 30 Patent Owner raises no evidence of secondary considerations of nonobviousness in this case. Thus, weighing the evidence of obviousness that is before us, we find that Petitioner has shown by a preponderance of the evidence that claims 1, 20, 22–25, and 30 would have been obvious over the combination of Yamashita and Shamoon.” slip op. at 31

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “We do not find Patent Owner’s arguments persuasive. Teaching away requires that “a person of ordinary skill upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).4 Patent Owner cites nothing in Yamashita that says that adding the features from Shamoon in addition to the automatic functionality of Yamashita would be unlikely to work; Yamashita alleges only that manual control alone has certain disadvantages. 4 We understand Patent Owner to be arguing both that the references teach away from the combination generally and teach away because, in particular, the combination would change the principle of operation of the system. PO Resp. 33–36. See In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where nothing in the prior art device suggested that the claimed invention was unlikely to work). The lack of teaching away is confirmed by Yamashita’s disclosure of an embodiment requiring manual interaction. See Reply 20 (citing Ex. 1006, 22:31–51). Indeed, although Patent Owner contends that automatic functionality is “not the focus or main purpose of Shamoon,” PO Resp. 35, Shamoon’s system demonstrates that automatic functionality can be combined with manual functionality to result in a working system. See Ex. 1007, 8:36–45. As for Patent Owner’s contentions that Yamashita “abandoned bi- directional communication” (PO Resp. 35), we find no support in the cited portions of Yamashita for these contentions. Although Yamashita does tout the benefits of its automatic control system, the cited portions of Yamashita are silent about the advantages or disadvantages of “bi-directional communication.” As for Patent Owner’s arguments about substantial reconstruction and redesign (PO Resp. 36 (citing Ex. 2008 ¶ 91)), we do not find the testimony or argument persuasive. Yamashita’s control terminal and mobile terminals already has built in communication abilities (Ex. 1006, 11:31–38), and we find Dr. Selker’s testimony persuasive that a person of ordinary skill would have been motivated to add the ability to communicate the thermostat reading to verify that Yamashita’s automatic control worked. Ex. 1002 ¶¶ 205–207. As for Patent Owner’s allegation that the combination with Shamoon would change Yamashita’s principle of operation, we disagree. Yamashita would continue to work as before; the messages, rules, and control information would continue operate in the same manner. Shamoon would only add additional functionality to allow for an improved user interface and two-way communication. Where the device would operate on the same principles as before, the combination does not change the principle of operation. See Mouttet, 686 F.3d at 1332 (noting Ratti inapplicable where the modified apparatus will operate “on the same principles as before”). As Petitioner explains, Shamoon demonstrates that its known techniques have been used to improve similar devices in similar ways. We find that Petitioner has articulated sufficient reasoning with rational underpinnings to support the combination. See Ex. 1002 ¶¶ 205–207, 213. Thus, we conclude that a person of ordinary skill would have had reason to combine the teachings of Yamashita and Shamoon.” slip op. at 29

  Patent outcomesUS 8,626,344 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,626,344

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.