• Apple Inc. v. Smart Mobile Technologies LLCSome claims unpatentable
  PTAB · Jun 3, 2026 · IPR2022-00981 · APJ Jameson Lee · IPR · Remand

  On remand, claims 8–11, 13, 17, and 19 were held unpatentable over Rautiola, Regnier, and Sainton; claim 15 was not shown unpatentable.

  RulingsRemand decision

  • RemandMixed

    “8–11, 13, 15, 17, and 19, and remanded “for consideration of the patentability of those claims.” Id. at 14. We understand both the reversal and vacature are with respect to Ground 1 of alleged unpatentability, not Ground 2, because the Federal Circuit’s decision did not discuss anything relating to Ground 2. Paper 43. The parties agreed. Paper 44. In this remand proceeding, neither party requested the filing of additional briefing or evidence. In a telephone conference call, both parties expressed agreement with the Board (1) that “there is no issue regarding collateral estoppel or issue preclusion with respect to dependent claims 8– 11, 13, 15, 17, and 19, and (2) that the remand proceeding would not involve the Board revisiting any matter or issue concerning alleged obviousness of claims 1, 8, 9, 11, 13, 17, and 19 over Ground 2.4 Papers 43, 44. The parties also agreed that the remand proceeding would only involve the Board reviewing the alleged obviousness of dependent claims 8–11, 13, 15, 17, and 19 as obvious over Rautiola, Regnier, and Sainton. Id. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. On the record before us, which is the same as the record before us at the time we issued the first final written decision (Paper 34), we determine that Petitioner has proved by a preponderance of the evidence that claims 8– 11, 13, 17, and 19, but not claim 15, of the ’936 patent are unpatentable over Rautiola, Regnier, and Sainton.” slip op. at 3

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “5. Petitioner’s Request to Discredit Dr. Cooklev’s Declaration Petitioner makes several arguments discrediting Dr. Cooklev’s declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. We have already considered and rejected this request in the Final Written Decision issued on November 7, 2023. Paper 34, 21–23. Our reasoning need not be reiterated here. Petitioner does not persuade us that Dr. Cooklev’s declaration testimony should be accorded little to no weight.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Cooklev, accepts Dr. Kotzin’s proposed level of ordinary skill in the art. Ex. 2031 ¶ 24. We adopt Petitioner’s proposal regarding the level of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). A prior art reference constitutes analogous art if it is “from the same field of endeavor” or “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023).” slip op. at 16

  Patent outcomesUS 8,472,936 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,936
• 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
• Lenovo (United States), Inc. v. University Of RochesterSome claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01225 · APJ Thu A Dang · IPR · Final written decision

  Claims 1 and 3–7 are unpatentable as obvious; claims 8–12 were not shown unpatentable because the asserted grounds did not establish asynchronous operation between domains.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification is the ‘single best guide to the meaning of a disputed term,’ . . . and ‘is, thus, the primary basis for construing the claims.’” Trs. of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citations omitted). Although Patent Owner contends that the Specification disparages systems that impose significant restrictions on the possible choices of frequencies (PO Resp. 21), we find availing Petitioner’s contention that “[s]upport for Patent Owner’s construction is absent from the specification.” Pet. Reply 10. As Petitioner points out, Patent Owner’s claim construction “appears to be based on a single paragraph of the ’443 patent referring to preexisting ‘synchronization schemes [that] restrict the phase relationship and relative frequencies of the clocks.” Id. That is, the only reference by Patent Owner to the Specification is that the Specification states that “Some synchronization schemes restrict the . . . relative frequencies of the clocks, thereby eliminating the need for hardware arbitration [27]. Unfortunately, these schemes impose significant restrictions on the possible choices of frequences.” PO Resp. 26 (citing Ex. 1001, 6:32–36). We agree with Petitioner that such disclosure in the Specification “does not describe how these synchronization schemes ‘restrict the phase relationship and relative frequencies’ with any specificity.’” Pet. the Specification that some schemes impose restrictions on the possible choices of frequency is not a disparagement of any system that has limited choices of frequency or would preclude the claims from covering such prior art techniques. Instead, as Petitioner points out, the Specification of the ’443 patent states “[t]he preferred embodiment uses four domains […] so that domains may vary somewhat in size and still be covered by a single clock.” Id. (citing Ex. 1001, 5:57–59). As Dr. Baker testified in support of Petitioner’s contention, “the preferred embodiment of the ’443 patent relies on a single external master clock that distributes a signal to the local PLL of each domain.” See Ex. 1032 ¶ 9. Thus, although Patent Owner contends that clock signals generated based on a master clock cannot be interpreted to be generated independently of the clock signals generated for others of the plurality of domains (PO Resp. 49), we agree with Petitioner that such claim construction would “exclude[] the preferred embodiment of the ’443 patent,” which is disfavored. Pet. Reply 11. For the reasons discussed above, we conclude that “changeable independently” of the other domains does not require that the separate clocks in the plurality of domains be globally-asynchronous.” slip op. at 12

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

    “As both parties recognize, (PO Resp. 5; Pet. Reply 12), “[actual] [r]eduction to practice in the United States requires that the invention be embodied in tangible form.” Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002). In particular, actual reduction to practice requires a showing of the invention in a physical or tangible form that shows every element. not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445 (Fed. Cir. 1984). Here, Patent Owner does not provide any evidence showing every element of the claims in physical or tangible form, as required, but rather contends that the Specification refers to the Paper, wherein the Paper stated that simulation using a software, SimpleScalar, was performed. PO Resp. 16. We are persuaded by Petitioner’s contention that the SimpleScalar simulation was not an actual reduction to practice of the claimed invention. Pet. Reply 12. As Petitioner points out, claim 1, for example, is directed to a “microprocessor,” wherein “Patent Owner has presented no evidence and has not alleged that any physical microprocessor was ever produced or operated.” Id. at 13; see PO Resp. 15–17. And as Petitioner points out, “Patent Owner has produced no evidence of any physical prototype of the claimed microprocessor that could have validated the simulation.” Pet. Reply 13–14. We agree with Petitioner that, at most, such simulation “demonstrated feasibility for prototyping of a microprocessor,” but not a tangible form of the microprocessor itself as required for an actual reduction to practice. Id. at 14; see also Standard Mfg. Co. v. United States, 25 Cl. Ct. 1, 67 (1991) (“The feasibility of the optical alignment system may have been proven by the optical mock-up, but the optical mock-up was not a reduction to practice of the proposed MHU–145/M trailer.”).” slip op. at 36

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

    “Here, we find that Petitioner has not met its burden to prove that one of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  • BurdenMixed

    “of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 14, 2026 · IPR2024-01089 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 2, 9–11, 13, 15, 16, 56–64, and 84 are unpatentable as obvious; claim 14 was not shown unpatentable because the motivation to combine the gesture teachings was not established.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In our Decision on Institution, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advanced-level degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 9. Additionally we did not adopt Petitioner’s proposed additional requirement that one of ordinary skill of the pertinent technologies employed by the ’212 patent.” Id. We adopted, for the purposes of the Decision on Institution, the portion of the definition proposed by Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” as “consistent with the problems and solutions in the ’212 patent and prior art of record and . . . supported by declarant testimony.” Id. Patent Owner adopted this definition (PO Resp. 12–13), noting Dr. Cockburn’s testimony regarding this definition (Ex. 2006, 12:15– 21). Patent Owner’s declarant, Dr. Madisetti, also agreed with and adopted this definition. Ex. 2005 ¶¶ 23–25. For the same reasons discussed in the Decision on Institution, we again adopt this definition.” slip op. at 8

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

    “C. Claim Construction The parties’ papers include some discussion of claim construction. PO Resp. 13–17; Pet. Reply 1–2; PO Sur-reply 2–3. Each party asserts, and we agree, that there is no controversy that would require us to decide any claim construction issue. Pet. Reply 2; PO Sur-reply 3; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

  Patent outcomesUS 10,671,212 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,671,212
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 14, 2026 · IPR2024-01088 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 9, 12, 19–22, 24–32, 36–43, 47, 58, 59, 63, 71, 74, 81–84, 86–94, 97–105, 109, 119–121, and 124 are unpatentable over Chaudhri, Martyn, and Griffin; claims 35 and 57 are not.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advanced-level degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 9. Additionally we did not adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Id. We adopted, for the purposes of the Decision on Institution, the portion of the definition proposed by Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” as consistent with the problems and solutions in the ’758 patent and prior art of record and supported by declarant testimony. Cockburn’s testimony regarding it (Ex. 2007, 9:7–23), and, for the same reasons discussed in the Decision on Institution, we adopt it here.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine that Petitioner has sufficiently shown that one of ordinary skill in the art would have combined the snapshot menu and pressand-hold gesture of Martyn with Chaudhri as Petitioner proposes, resulting in a device that provides a contextual shortcut sub-menu of common application functions in response to a touch-and-hold user input. We credit Dr. Cockburn’s testimony in Petitioner’s showing that Martyn’s contextual allow the user to accomplish recurring tasks more quickly. Pet. 15–17 (citing, inter alia, Ex. 1003 ¶¶ 61–62, 66–67). Contrary to Patent Owner’s contentions, Petitioner provides a showing of a motivation to use, in the resulting combination, both Martyn’s menu and its mechanism for calling the menu. Pet. 15–17 (citing Ex. 1003 ¶¶ 49–53, 63); Ex. 1067 ¶ 21. We credit Dr. Cockburn’s supported testimony of the motivation for the combination Petitioner proposes, using the teachings of Martyn identifying its App Snapshot called through a press-and-hold as allowing a user access to multiple options pertaining to one application at one time in one menu, for ease and speed of navigation. Pet. 15–18; Ex. 1003 ¶¶ 61, 63 & n.3, 68 (citing Ex. 1005 ¶¶ 4–8, 15); Ex. 1067 ¶¶ 20, 21. Additionally, we credit Dr. Cockburn’s testimony regarding the analogousness of the touch-and-hold mechanism to trigger the menu to the press-and-hold trigger for the menu in Martyn, which Patent Owner criticizes as unsubstantiated (PO Sur-reply 18) but we find to be supported by record evidence. Pet. 16 (citing Ex. 1003 ¶¶ 49–53, 63); Reply Br. 17 (citing Ex. 1067 ¶¶ 16–22), 20 (citing Ex. 1067 ¶¶ 30) ; Ex. 1003 ¶¶ 53 (citing, inter alia, Ex. 1022 ¶ 183), 63 & n.3.” slip op. at 18

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

    “at first contending that these limitations require a continuous touch meeting both limitations; however, Patent Owner withdrew the request to construe the claim to require one continuous gesture to meet the two limitations, agreeing with Petitioner’s assertion that either one continuous gesture or two separate gestures could meet the limitations. PO Resp. 15–18; Pet. Reply 3– 5; PO Sur-reply 3–4; Tr. 28:20–29:2. Because we agree with the parties that this is the correct construction, there is no remaining controversy regarding this construction that would require us to decide any claim construction issue. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the 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 foundDecided for petitioner

    “We determine that Petitioner has sufficiently shown that one of ordinary skill in the art would have combined the snapshot menu and pressand-hold gesture of Martyn with Chaudhri as Petitioner proposes, resulting in a device that provides a contextual shortcut sub-menu of common application functions in response to a touch-and-hold user input. We credit Dr. Cockburn’s testimony in Petitioner’s showing that Martyn’s contextual allow the user to accomplish recurring tasks more quickly. Pet. 15–17 (citing, inter alia, Ex. 1003 ¶¶ 61–62, 66–67). Contrary to Patent Owner’s contentions, Petitioner provides a showing of a motivation to use, in the resulting combination, both Martyn’s menu and its mechanism for calling the menu. Pet. 15–17 (citing Ex. 1003 ¶¶ 49–53, 63); Ex. 1067 ¶ 21. We credit Dr. Cockburn’s supported testimony of the motivation for the combination Petitioner proposes, using the teachings of Martyn identifying its App Snapshot called through a press-and-hold as allowing a user access to multiple options pertaining to one application at one time in one menu, for ease and speed of navigation. Pet. 15–18; Ex. 1003 ¶¶ 61, 63 & n.3, 68 (citing Ex. 1005 ¶¶ 4–8, 15); Ex. 1067 ¶¶ 20, 21. Additionally, we credit Dr. Cockburn’s testimony regarding the analogousness of the touch-and-hold mechanism to trigger the menu to the press-and-hold trigger for the menu in Martyn, which Patent Owner criticizes as unsubstantiated (PO Sur-reply 18) but we find to be supported by record evidence. Pet. 16 (citing Ex. 1003 ¶¶ 49–53, 63); Reply Br. 17 (citing Ex. 1067 ¶¶ 16–22), 20 (citing Ex. 1067 ¶¶ 30) ; Ex. 1003 ¶¶ 53 (citing, inter alia, Ex. 1022 ¶ 183), 63 & n.3.” slip op. at 18

  Patent outcomesUS 10,656,758 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,758
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 8, 2026 · IPR2024-01091 · APJ Jameson Lee · IPR · Final written decision

  Claims 30 and 62 are unpatentable over the respective Kim and Burrough combinations; claims 1, 32, 34, and 64 were not shown unpatentable because the cited gestures lacked a common starting point.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11

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

    “gesture” must refer back to the same gesture reflects the plain meaning of the claim language. In each independent claim, the structure and usage of the language in dispute are the same. Only one gesture detection is recited, and there is no language reasonably indicating repetition or reiteration of detection for any reason at any time. Patent Owner’s position that to meet “the gesture” recitations, prior art “gestures” must all share a common starting point also makes sense and is appropriate. The same gesture must start from the same starting point or else it is not the same gesture. Specifying the understanding this way avoids treating two similar gestures as the same gesture, if they have different starting points. For instance, two taps may be the same in every way, except for their starting points. They are not the same gesture in the context of these claims.” slip op. at 19

  • Expert testimonyOther

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11

  • BurdenNot shown unpatentable

    “Neither the tap-and-hold gesture in the bottom path of Kim’s Figure 7 nor the “long press input” and “long press event” of Kim such as that shown in Kim’s Figure 5 is the double-tap gesture Petitioner relies on to satisfy limitation [1.f]. Neither has been shown to have a common starting point with the double tap. Thus, Petitioner’s showing is inadequate. Limitation [1.i] recites: [1.i] when the magnitude of the duration of the gesture being detected on the touch screen on the object is greater than a second magnitude threshold, perform another operation. Pet. v. Petitioner explains: Kim teaches or renders [1.i] obvious. APPLE-1003, ¶62. Kim further describes “another operation” that is performed when the magnitude of the duration of the gesture is greater than a second magnitude threshold—specifically, a minimum threshold to be deemed an intentional touch. Specifically, Kim explains that, “[i]f detecting a user gesture, namely, if receiving an input event from a user through the touch screen, the mobile device determines the type of an input event.” APPLE-1004, [0053]. Kim states that, “[i]f an interrupt is not a request for the activation of the zoom mode as the result of determination in step 205, the mobile device can perform some action in connection with an interrupt (step 207),” shown in Figure 2a below. APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶63. [Figure 2A of Kim is a flow diagram of a method for a touch-based control in a zoom mode (Ex. 1004 ¶ 20)] Kim additionally explains that if the mobile device determines that a detected user gesture does not correspond to any particular input event, “the mobile device disregards the received input event.” APPLE-1004, [0053]. Based on Kim’s disclosure of “disregarding” a received input, a POSITA would have understood that, for the detected interrupt (step 203) to be sufficient to cause the mobile device to “perform other action” (step 207), a magnitude greater than a minimum threshold value (e.g., the minimum threshold of an intentional user input) is relied upon, or rendered obvious, by Kim. APPLE-1004, FIG. 2a; APPLE-1003, ¶64. Thus, when the magnitude of the gesture is greater than a second magnitude threshold, the device “performs other action” (e.g., display requested menu). APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶64. A POSITA would have understood that such an interrupt would be caused by a gesture that is longer in duration than the second threshold (as necessary to avoid the gesture from being disregarded), shorter than the duration necessary for a long press threshold, and a different gesture than a double tap gesture. APPLE-1003, ¶64. Pet. 24–26. As explained by Petitioner, the interrupt gesture relied on by” slip op. at 40

  Patent outcomesUS 10,936,114 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,936,114
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9

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

    “First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27

  Patent outcomesUS 10,656,755 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,656,755
• Bizlink Technology, Inc. v. Anderson Power Products, Inc.Some claims unpatentable
  PTAB · Nov 7, 2025 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Final written decision

  Claims 1–3 and 7–12 are unpatentable; claim 4 is not shown unpatentable because Winkler does not establish that its insulating barriers press against each other when partially disconnected.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner’s first argument that a level of ordinary skill in the art that encompasses an individual having experience with electrical circuits but not electrical connectors is not consistent with the technology and descriptions in the ’017 patent. See PO Resp. 7. The field of the invention of the ’017 patent is “electrical connectors, and more particularly, . . . an electrical connector that suppresses arcing if connected or disconnected while current is flowing.” Ex. 1001, 1:7–9. Consistent therewith, the challenged claims are directed to “[a]n electrical connector pair” and recite structural features of the electrical connector pair. Id. at 4:20–56, 5:1–20.” slip op. at 10

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

    “We find that the intrinsic evidence supports maintaining our construction in the Institution Decision that “insulating” means “electrically insulating.” See Dec. 11–12. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 2001 ¶ 102. Accordingly, we find Dr. Eldering’s testimony persuasive as to this issue and determine that the diagram shows what an ordinarily skilled artisan would have reasonably inferred Winkler to disclose when the connectors are partially disconnected. Compare Ex. 1004, Fig. 2, with Pet. 33; see also Ex. 1004, 3:14–27 (discussing the process by which the connectors are engaged with each other).” slip op. at 44

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

    “Id. at 3:27–37 (emphasis added). These wall portions 58 are located between the distal ends of the terminals and where Petitioner proposes to add a printed circuit board or wiring board to Winkler. See id. at Fig. 2; Pet. 44–46 (diagrams showing Winkler as modified to have a printed circuit board or wiring board). As such, movement of Winkler’s terminals appears to be mostly limited to within their respective receiving pockets. Given the above teachings, we fail to see how Petitioner’s proposed modification would have meaningfully interfered with the degree of freedom of movement required by Winkler’s terminals. Notably, Mr. Locati’s testimony regarding this issue is conclusory. See Ex. 2001 ¶ 120. Because movement of Winkler’s terminals occurs primarily in the receiving pockets, we also do not discern how the solder joint of Petitioner’s proposed modification would experience undue stress or risk breaking due to that movement. See Ex. 1004, 1:47–55, 3:14–37, Fig. 2; Pet. 44–46. This is particularly true in view of Winkler’s teaching that each cylindrical end portion may be soldered to a cable. See id. at 2:6–10; see also Pet. 43 (arguing that Winkler teaches soldering to a cable but not specifically to a printed circuit or wiring board). Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claim 8 would have been obvious over the combined teachings of Winkler and Handbook.” slip op. at 55

  Patent outcomesUS 8,808,017 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,808,017
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdSome claims unpatentable
  PTAB · Oct 30, 2025 · IPR2024-00735 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–6 and 9–13 are unpatentable as obvious; claims 7, 8, 14, and 15 were not shown unpatentable because WinTV was not established as a prior-art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8–9. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent Owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s does not change the arguments set forth herein.” PO Resp. 5. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.10 C.” slip op. at 8

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

    “We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user, are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

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

    “2. “the first group of video information being configured to allow a user to edit” Petitioner asserts: “This limitation should be construed for the purposes of this proceeding as meaning at least that a user can modify which video information is a part of the first group of video information.” Pet. 21. Patent Owner neither proposed its own construction nor disagreed with Petitioner’s proposed construction. We adopt the meaning as proposed by Petitioner. D.” slip op. at 14

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

    “We do not reach a resolution on the issue of relative cost between a wired LAN versus a wireless LAN, because Petitioner’s assertion that wireless LANs “were often cheaper and easier to install” is nebulous by use of the imprecise word “often.” “Often” cheaper permits “often” not cheaper. Much depends on how many access points would exist in the wired LAN. Petitioner does not discuss that consideration in the context of Horn. Also, we are persuaded by Petitioner’s other stated reasons for implementing Horn’s LAN as a wireless LAN: (1) that a wireless LAN can be more convenient to users, and (2) Baumgartner provides adequate motivation by disclosing transmission of video from server 36 via communications network 34 such as the Internet over link 48 implemented wirelessly to user computer equipment 22 such as a personal computer. Pet. 29–32. We are persuaded that a wireless LAN provides more user convenience by enabling the user equipment accessing the external network to be flexibly located within the range of the LAN without need to have wires installed to run to those locations. That is true whether there is only one user equipment or there are multiple user equipment, one per user. In the case of only one user equipment, the user can access the external network from a wide range of locations and change that location flexibly. In the case of multiple user equipment, one per user, each user can access the external network from his or her own preferred location, and also change that preference at any time without regard to whether wires have been installed to the preferred location.” slip op. at 22

  Patent outcomesUS 11,017,815 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Apple Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Oct 9, 2025 · IPR2024-00806 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 15–17, and 20 are unpatentable under § 103; claims 14 and 19 were not shown unpatentable because the proposed paramagnetic flux paths in Wakuda lacked adequate support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 33. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 3. 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 ’830 patent specification.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “The parties agree that independent claims 1, 19, and 20 include means plus function limitations under 35 U.S.C. § 112 ¶ 6.8 Pet. 3–7; PO Resp. 6–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claims 1, 19, and 20 are means plus function limitations. Pet. 3–7; PO Resp. 6–14. Construing a means plus function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Therefore, the specification clearly links the function of “control[ing] supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” at least to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.11 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs to the switch; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law 11 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:17–20. that limits the structure to that necessary to perform the claimed function. 12 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 18

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

    “to include the ability disclosed in Ramsay to allow a user to customize and store parameters associated with haptic effects, such as creating “haptic track files” that specify variations in the amplitude and frequency of the effect over time to achieve a desired effect. Pet. 46–47 (citing Ex. 1006 ¶¶ 15, 25– 28, 37; Ex. 1003 ¶¶ 192–193). Petitioner argues that this combination would have been motivated by the desire to expand the functionalities of haptic devices to allow end users to create and customize haptic effects, to provide a fuller haptic experience, and to be able to store haptic effects to save processing power compared to real-time generated effects. Id. at 47–49 (citing Ex. 1006 ¶¶ 14–15, 30, 47, 53–57; Ex. 1003 ¶¶ 194–196). Petitioner argues that this making combination would have had a reasonable expectation of success given that both references deal with linear actuators, both disclose storing frequency and amplitude values, and the combination involves routine knowledge of software techniques. Id. at 49–50 (citing Ex. 1004, 2:3–9; Ex. 1006 ¶¶ 17, 26–28; Ex. 1003 ¶¶ 197–198). Petitioner further argues that it would have been obvious to use the H-bridge switch of Rossi as part of the Gregorio actuator drive circuit 16 in the asserted Gregorio-Ramsay combination to periodically switch the polarity of drive signals to electric coil 28 of Gregorio, and thus oscillate magnet 27, under the control of a signal from processor 12 of Gregorio. Pet. 56 (citing Ex. 1003 ¶ 211). Petitioner argues that this combination would have been motivated because Gregorio does not disclose implementation details and therefore one of ordinary skill would have looked toward teachings like Rossi to fill in those details, and that an H-bridge switch was a well-known example circuit for implementing a change in “current flow direction/polarity” for “push” and “pull” actions in a system, and was a simple, cost-effective, and reliable circuit design. Id. at 56–58 (citing Ex. 1020, Abstr., Figs. 4, 6, 1:65–3:54; Ex. 1003 ¶¶ 212–217). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques through routine circuit design considerations and software instructions for generating the control signal. Id. at 58 (citing Ex. 1003 ¶ 218). Petitioner further argues that it would have been obvious to modify the Gregorio-Ramsay-Rossi combination, using the control algorithm disclosed in Aldrich, to replace the monitoring technique of Gregorio with that of Aldrich to maintain a resonance frequency by incrementing or decrementing the drive frequency. Pet. 58–59 (citing Ex. 1004, 4:22–28, 4:42–48; Ex. 1021, 2; Ex. 1003 ¶ 219). Petitioner’s expert provides implementation details of Aldrich, including that the Aldrich hill-climb technique would use a Boolean value to indicate whether the frequency was being increased, with local variables set to default values, and use integer values when processing sensor signals. Id. at 59–60 (citing Ex. 1021, 2; Ex. 1003 ¶¶ 220–222). Petitioner argues that these modifications would have been motivated to improve the Gregorio system using the Aldrich feedback algorithm for targeting a resonant frequency, given that the Gregorio approach had shortcomings that required a monitoring period with reduced haptic feedback, receiving weak EMF signals. Id. at 61–62 (citing Ex. 2004, 3:65–5:55, 5:63–65; Ex. 1021, 1–3; Ex. 1003 ¶¶ 223–227). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques for improvement to yield predictable results, readily implemented via software executed by the microprocessor. Id. at 62–63 (citing Ex. 2004, 2:44–50; Ex. 1021, 2; Ex. 1003 ¶ 229). Patent Owner does not address Petitioner’s arguments regarding the” slip op. at 27

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,941,830

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.