- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00254 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3, 5–9, 11–13, 15–18, and 20 are unpatentable as obvious over Karppanen and over Yare.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Accordingly, we do not discount Mr. Smith-Gillespie’s testimony” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim. Petitioner asserts that in the Delaware action , the district court construed “closed loop” as “gas pathway within a display housing containing gas that is essentially isolated from external air.” Pet. 11 (citing Ex. 1026, 1). Petitioner asserts that the district court’s construction is the proper construction, in light of the specification and the prosecution history of the ’740 patent. Id. at 11–12. Petitioner explains: The ’740 patent refers to the gas/air, circulating through a closed loop as the circulating gas/air and also as the “isolated gas.” (Ex. 1001, 9:64–10:3, 10:7–9, 10:56–58, 11:30–12:6 (claims reciting circulating gas/air), 3:30–[39], 3:50–52 (specification referring to gas in the closed loop as “circulating gas” and “isolated gas”), FIG. 1.) Moreover, as noted above, the Applicant distinguished the claims from the Thielemans prior art based on the argument that the closed loop must be separate from and in addition to the open loop. (Ex. [1031], pp. 44-45, 160 (Responses filed on 01/07/2019 and 08/15/2019).) The Court’s “closed loop” construction should apply here, though Applicant notes that this claim construction does not affect the applicability of the prior art in this Petition because the art teaches the separate loops. Id. at 12. Petitioner’s characterization of the prosecution history with respect to the Thielemans reference is inaccurate. Our review of the cited portions of the prosecution history reveals that the Applicants did not argue to the Examiner that the closed loop and the open loop must be isolated from each other and cannot mix. Rather, the Applicants argued that Thielemans discloses having an open loop or a closed loop, not both an open loop and a closed loop. Ex. 1031, 44–45, 160. The Applicants also argued that Thielemans’s closed loop is not “about” and is not “encircling” the electronic image assembly. Id. at 160. The cited prosecution history does not support Petitioner’s assertion. Patent Owner explains that the ITC in the related investigation” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 34
Patent outcomesUS 10,506,740 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,506,740 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00221 · APJ Jameson Lee · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Karppanen and Larson; the Board found the evidence of obviousness outweighed the evidence of nonobviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“for outdoor displays, no one (including Samsung, despite having begun attempting to develop outdoor displays at least by 2005) was successful until Mr. Dunn and Mr. Hubbard conceived of their invention.” PO Resp. 65. Patent Owner cites no evidence for this proposition. Thus, Patent Owner’s assertions regarding Mr. Dunn’s and Mr. Hubbard’s invention satisfying the alleged need are based on unsupported attorney argument. Accordingly, “we conclude that the nexus between the claimed invention and the purported long-felt, unmet need is too attenuated to provide a persuasive rationale for nonobviousness.” In re Karpf, 758 F. App’x 960, 965 (Fed. Cir. 2019).” slip op. at 62
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableObjective indicia outweighedUnpatentable
“and against obviousness, and weighed the evidence accordingly. The evidence of obviousness outweighs the evidence of nonobviousness. Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Karppanen and Larson.” slip op. at 74
Patent outcomesUS 11,013,142 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,013,142 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentablePTAB · Apr 22, 2026 · IPR2022-01002 · APJ Jameson Lee · IPR · Remand
On remand, claims 1–9 and 12–20 are unpatentable as obvious over Paulraj and Heath under § 103.
RulingsRemand decision- RemandOther
“determining no challenged claim had been proved unpatentable by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively, “Petitioner”). Paper 41. Petitioner appealed to the U.S. Court of Appeals for the Federal Circuit. Papers 43, 44. On January 13, 2026, the Federal Circuit vacated and remanded, on the basis that the Board erred by not considering certain alternative arguments presented in the Petitioner’s Reply (Paper 29), which were properly responsive to claim construction proposed in the Patent Owner Response and adopted by the Board.1 Paper 45. In its Reply, Petitioner alternatively argued that even under the Patent Owner’s claim construction relating to “the plurality of antennas,” the same prior art references nonetheless still rendered obvious the challenged claims. In this remand proceeding, neither party requested the filing of additional briefing, despite having been given an opportunity to make and explain such a request. Paper 51. 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. Having considered all of the arguments presented in Petitioner’s Reply, we determine that Petitioner has proved by a preponderance of the evidence that claims 1–9 and 12–20 of U.S. Patent No. 9,191,083 B1 (Ex. 1001, “the ’083 patent”) are unpatentable. A.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 2–3 (citing Ex. 1003 ¶¶ 27–28). Petitioner additionally states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 3. Patent Owner does not in its Response address the level of ordinary skill. Patent Owner’s expert witness, Dr. Cooklev, testifies that he “will apply the same definition of the level of skill of a POSITA [as Petitioner].” Ex. 2004 ¶ 19. Based on the evidence of record, we determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience related to the design or development of wireless communication systems. This is consistent with Petitioner’s articulation of the level of ordinary skill, with the exception of Petitioner’s open-ended reference to “at least” two years of experience, because that would improperly encompass a level of experience only possessed by an expert. This articulation of the level of ordinary skill is also the same as what we determined in the Final Written decision issued on November 30, 2023. Paper 41, 6. C. slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends: “The plain meaning of the claims requires that the same ‘plurality of antennas’ be used for transmitting and receiving the plurality of signal streams.” PO Resp. 5, 9–12. Citing Dr. Cooklev’s testimony, Patent Owner contends that the ’083 patent’s Specification describes embodiments that use the same antennas for both transmitting and receiving data streams. PO Resp. 7–9 (citing Ex. 2004 ¶¶ 34–35). In the Final Written Decision, we determined: Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas— one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims. Paper 41, 13 (emphasis added). The Federal Circuit agreed with our claim construction. Apple Inc. v. Smart Mobile Technologies LLC, U.S. Ct. App. Fed. Cir., slip op. 24-1419 (January 13, 2026) (2026 WL 91021) (Paper 45, 2–4). We continue to apply the same construction here that we adopted in the Final Written Decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“legally sufficient motivation for modifying Paulraj, but only attempted to show that the modification “could” have been made by one of ordinary skill in the art which is not enough for a showing of obviousness. Sur-reply 8–9. We disagree with Patent Owner. Establishing that certain technique was well-known to one of ordinary skill in the art at the effective filing date of the challenged patent constitutes sufficient motivation to make a modification in accordance with what was well-known in the art to one of ordinary skill, absent factors not present here. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. That would be the situation where a technique was well-known to one of ordinary skill in the art, unless there is actual difficulty in making the application. The “improvement” here, although not articulated by Petitioner, is inherent with the technique, not requiring use of separate antennas for transmitting and receiving, i.e., eliminating the need for additional parts. Further, it is not necessary to show that a modification is the “best option,” because any “suitable option” would suffice. See Intel Corporation v. Qualcomm Incorporated, 21 F.4th 784, 800 (Fed. Cir. 2021). Here, Patent Owner does not assert that one of ordinary skill in the art would have had difficulty modifying Paulraj to use some of the same antennas both for transmitting and for receiving. Nor does Patent Owner dispute that it was well known to one of ordinary skill in the art to use the same antenna(s) for both transmitting and for receiving. We further note the following description in the Specification of the ’083 patent: “The typical CT/MD [cellular telephone/mobile device] has one transmitter and one receiver (T/R), with one antenna.” Ex. 1001, 1:47–48. That statement is fully consistent with Petitioner’s assertion that it was well-known to use the same antenna for transmitting and for receiving. For the foregoing reasons, notwithstanding Patent Owner’s arguments to the contrary, we determine that Petitioner sufficiently has shown that it would have been obvious to one of ordinary skill in the art to modify Paulraj such that some of the same antennas would be used both for transmitting and for receiving, according to limitations 1[b], 1[d], and 1[e].” slip op. at 36
Patent outcomesUS 9,191,083 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,191,083 - Deltran USA LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- Strike new argumentNew argument consideredOther
“Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00329 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 are unpatentable as obvious over Stone and Hoyos, with Varghese additionally applied to claims 7, 15, and 22.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. at 4–5. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’010 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“3. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, 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). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting Bigio, 381 F.3d at 1326); see id. at 1381. Hence, a field-of-endeavor analysis should consider a patent’s claims and written description. See id. at 1380–81.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“4. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos (Pet. 20): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (4) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (5) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info”; (ii) “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 20; see Ex. 1003 ¶ 62; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 42
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“5. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 13:56. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses “system 400 configured to utilize the currency display over a network 402.” Pet. 22 (emphasis omitted) (quoting Ex. 1008 ¶ 40). According to Petitioner, “Stone further describes that its system includes software ‘such as program code and/or data . . . stored on one or more computer readable mediums.’” Id. at 23 (alteration by Petitioner) (quoting Ex. 1008 ¶ 54). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–34; Sur-reply 2–26. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with” slip op. at 62
Patent outcomesUS 9,972,010 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,972,010 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00331 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–12, 14–18, and 20–23 are unpatentable as obvious over Stone, Hoyos, and Varghese; the Board did not reach the other asserted grounds.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of biometric authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 4. Petitioner also asserts that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard” for an ordinarily skilled artisan. Id. Dr. Jones’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 19–20. In the Institution Decision, we adopted Petitioner’s description of an ordinarily skilled artisan except for the language “at least” that qualifies the experience level and allows the experience level to encompass an expert’s level of skill. Inst. Dec. 21. We explained that except for the language “at least” that qualifies the experience level, “Petitioner’s description of an ordinarily skilled artisan comports with the technology and claims of the ’886 patent as well as the asserted references.” Id. (citing Ex. 1003 ¶ 20). In the Response, Patent Owner notes that for “the purposes of this” slip op. at 18
- Obviousness (§103) › Analogous artOther
“4. WHETHER STONE IS ANALOGOUS ART (a) General Principles “A reference qualifies as prior art for an obviousness determination only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). According to the Federal Circuit, the Supreme Court’s KSR decision “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (emphasis by the court) (quoting KSR, 550 U.S. at 402). In an inter partes review, 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). The scope of analogous art includes references “from the same field of endeavor” and references “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). When evaluating the field of endeavor, a “factfinder must consider each reference’s disclosure in view of the ‘the reality of the circumstances,’ and ‘weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.’” Airbus, 941 F.3d at 1380 (citations omitted) (quoting” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“5. WHETHER AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN MOTIVATED TO COMBINE THE TEACHINGS OF THE REFERENCES WITH A REASONABLE EXPECTATION OF SUCCESS (a) Petitioner’s Contentions (i) Motivation to Combine: The Proposed Combination To show the proposed combination, Petitioner provides the following annotated version of Stone’s Figure 2 combined with Stone’s Figure 3 together with additional steps according to Hoyos and Varghese (Pet. 22): The above illustration includes Stone’s Figure 2 showing display 200 on an electronic device, Stone’s Figure 3 showing steps 300 through 318 for transferring funds to a recipient, and the following annotations in red: (1) a dashed line from the “$ Send money” button in Figure 2 to step 300 for “Select Currency for Display” in Figure 3; (2) a dashed line from name box 202 in Figure 2 to step 312 for “Enter Recipient Information” in Figure 3; (3) a dashed line from funds box 204 in Figure 2 to step 304 for “Enter Amount” in Figure 3; (4) a dashed line from funding source box 206 in Figure 2 to step 314 for “Enter Funding Source” in Figure 3; (5) a dashed line from the “Send” button 214 in Figure 2 to step 316 for “Confirm?” in Figure 3; and (6) additional steps after a “Yes” determination in step 316 for “Confirm?” as follows: (i) “Capture biometric info” followed by “Perform fraud detection”; (ii) “Capture location” followed by “Perform fraud detection”; (iii) “Trans authenticated?”; and (iv) “Stop transaction.” Pet. 22; see Ex. 1003 ¶ 68; Ex. 1008 ¶¶ 11–12, 16, 23–24, 29–35, Figs. 2–3.” slip op. at 46
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“6. INDEPENDENT CLAIM 1 (a) Preamble 1.0 Claim 1 recites “[a] system.” Ex. 1001, 14:2. Petitioner contends that Stone teaches claim 1’s preamble because Stone discloses system 400 “configured to utilize the currency display over a network 402.” Pet. 23 (emphasis omitted) (quoting Ex. 1008 ¶ 40); see id. at 70. According to Petitioner, system 400 includes “at least a user device 404,” one or more recipient devices 406, and “at least one payment provider server 408” communicating “over the network 402.” Id. (quoting Ex. 1008 ¶ 40). Patent Owner makes no arguments specific to claim 1’s preamble. See, e.g., Resp. 14–36; Sur-reply 2–22. Nonetheless, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. Generally, a preamble does not limit a claim. Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). We need not decide whether claim 1’s preamble limits the claim because, for the reasons stated by Petitioner and supported by Dr. Jones’s testimony, we agree with Petitioner that Stone teaches claim 1’s preamble. See Pet. 23–24; Ex. 1003 ¶¶ 85–88. (b)” slip op. at 76
Patent outcomesUS 11,526,886 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · Jul 1, 2025 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–6, 10–16, 20, and 21 are unpatentable as obvious over Kesanupalli, Challener, and Cheng.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has applied Petitioner’s definition of the level of skill of a person of ordinary skill in the art. PO Resp. 13. We apply Petitioner’s undisputed level of skill in the art with the exception of the phrase “at least” which injects potential ambiguity into the level of skill, because Petitioner’s proposed level of skill appears consistent with the problems addressed in the ’512 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Upon review of the complete record before us, we determine that it is not necessary for us to expressly construe any claim term. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). D. Ground 1: Alleged Obviousness of Claims 1–6, 10–16, 20, and 21 over” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For the following reasons, based on the evidence and arguments presented by Petitioner, we are persuaded that Petitioner establishes that an ordinarily skilled artisan would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Pet. 23–24; Ex. 1003 ¶¶ 48–51, 83. First, Patent Owner’s reliance on what Mr. Ramesh Kesanupalli, the individual, allegedly chose not to include in the disclosure of the Kesanupalli patent reference is unavailing. The question of obviousness is determined from the perspective of a hypothetical person of ordinary skill in the art not an actual person who may or may not have been a person of ordinary skill in the art. Ramesh Kesanupalli is one of five named co-inventors on Kesanupalli. Ex. 1006, code (75). 7 Patent Owner’s argument, in essence, is an improper request to limit the Kesanupalli reference to just the explicit problems addressed, solutions proposed, and goals achieved by the Kesanupalli reference. However, “[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). We have reviewed all of the cases cited by Patent Owner regarding the determination of obviousness. None of them is at odds with the principle stated in Heck.” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Summary of Claim 1 For all the foregoing reasons, Petitioner establishes a by a preponderance of the evidence that claim 1 would have been obvious over Kesanupalli, Challener, and Cheng.” slip op. at 62
Patent outcomesUS 10,929,512 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,929,512 - Microsoft Corporation v. Interdigital Patent Holdings, Inc.All claims unpatentablePTAB · Jun 23, 2025 · IPR2024-00306 · APJ Lisa A Murray · IPR · Final written decision
The Board held all challenged claims of the ’933 and ’054 patents unpatentable as obvious over Ahya and McKillop, with ’933 claims 20, 21, 42, and 43 also relying on Aholainen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three devices that used common wireless communications protocols such as Bluetooth and 802.11/Wi-Fi. More education, e.g., a Master’s or Ph.D., would compensate for less work experience and vice versa. 305 Pet. 13–14; accord 306 Pet. 14. Patent Owner “has adopted Microsoft’s definition for this proceeding.” 305 PO Resp. 6; accord 306 PO Resp. 6. Neither party argues that a particular level of ordinary skill in the art makes a difference in the outcome of the issues presented in these proceedings. Accordingly, we adopt Petitioner’s level of ordinary skill in the art, which we find to be consistent with the record evidence, particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We conclude that for the purposes of this Decision, we need not determine whether the claim term “detecting” encompasses “soliciting” detectable responses from other devices, as Patent Owner proposes, Sur- Reply 3, or whether Petitioner is correct that “solicitation and detection are distinct acts, and thus using Bluetooth for solicitation is not using Bluetooth for detection.” Reply 5. As discussed in Section IV above, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp., 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Here, it is not necessary to construe the term “detecting” to determine that no presumption of nexus exists because, for the reasons discussed below, we find that AirDrop is not coextensive with the challenged claims under either party’s interpretation of the term.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“device uses significantly less power than if a high speed seek was used.” Ex. 1005 ¶ 43. However, once a connection between two devices is established, Petitioner persuasively argues that “[a] POSITA would have been motivated to implement devices based on these teachings to switch from Bluetooth to Wi-Fi to transfer content, as taught by McKillop, because Ex. 1003 ¶ 70. Petitioner contends that a person of ordinary skill in the art at the time of the invention “would have reasonably expected to succeed in implementing these features because they would have required only minor software code that was well within the skill of a POSITA, as evidenced by these features’ ubiquity in the prior art.” Pet. 19–20; see Ex. 1003 ¶¶ 38–45 (ubiquity in the prior art), 72 (only “minor software code” required). Petitioner also persuasively argues that one of ordinary skill “would have been further motivated to implement the Ahya+McKillop wireless devices to prompt users to accept or deny incoming file transfers, as described by numerous background references[,]” and would have had a reasonable expectation of success in doing so. Pet. 22; see Ex. 1003 ¶¶ 46– 51 (background references), 78–81 (motivation), 83 (only “minor software code” required to implement combination). We find that on the full record Petitioner has sufficiently established that a person of ordinary skill in the art at the time of the invention would have been motivated to combine Ahya and McKillop. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).” slip op. at 18
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Here, the evidence demonstrates that AirDrop includes significant unclaimed features that are likely to have been major contributors to any commercial success or industry praise that Apple’s AirDrop-equipped devices have enjoyed. This is true even if the analysis is limited to the AirDrop feature itself, rather than to the entire Apple device. See Sur- Reply 10–11 (“Patent Owner is not claiming the commercial success of the iPhone to show a presumptive nexus. “). Petitioner identifies three major features of AirDrop that are not part of the claimed invention: (1) device visibility controls implemented using iCloud services-based authentication; (2) security, including encryption; and (3) tight integration within the Apple ecosystem. Reply 8; Ex. 1086 ¶ 15. We find that the evidence of these features is sufficient to rebut Patent Owner’s claim that it is entitled to a presumption of nexus.” slip op. at 39
Patent outcomesUS 9,173,054 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,173,054 - Apple Inc. v. Carbyne Biometrics, LLCAll claims unpatentablePTAB · May 22, 2025 · IPR2024-00334 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 are unpatentable as obvious over the stated combinations of Kesanupalli, Brown, and the applicable additional references.
RulingsFinal written decision- BurdenOther
“Burden of Proof The Petitioner has the burden of proving unpatentability by a preponderance of the evidence. 35 U.S.C. § 316(e) (2024). That burden only shifts to Patent Owner in limited circumstances not present here. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016). “Preponderance of the evidence means the greater weight of evidence, evidence which is, more convincing than the evidence which is offered in opposition to it.” United States v. C.H. Robinson Co., 760 F.3d 1376, 1383 (Fed. Cir. 2014) (internal quotations omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). Patent Owner states in its Response that “Patent Owner has applied Petitioner’s POSITA [person of ordinary skill in the art] for the sake of this Response.” PO Resp. 12. We adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. Petitioner’s proposed level of ordinary skill is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (PO. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11
- 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 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that the plain and ordinary meaning of a “restricted interface” is “an interface that limits accessibility.” Pet. 9 (citing Ex. 1003 ¶¶ 57–60). Petitioner explains: In the ’138 patent specification, disclosure of such an interface is sparse. For an example device that “includes a large and insecure storage 302 attached to a fast processor 304, and a smaller but secure storage 306 attached to a dedicated processor 308 and a sensor 310 (e.g., a camera or a fingerprint reader),” the specification refers to access limitations in connection with an application programming interface (API). APPL-1001, 4:9–13 (“users cannot access the secure storage area, and the fast processor can only communicate with the dedicated processor/sensor via a restricted API”). Thus, POSITA would understand restricted interface to at least include an API that limits accessibility to secure storage, fingerprint sensor, or dedicated processor. APPL-1003, ¶57. Pet. 7–8. Patent Owner has not proposed a construction for either “processor” or “restricted interface,” and states that because the Response does not depend on the meaning of those terms construed by Petitioner, “Patent Owner does not address these positions.” PO Resp. 12. The issues in this case do not require a construction of “processor.” Based on Petitioner’s explanations, which are supported by the cited evidence including the example given in the specification of the ’138 patent, we determine that a “restricted interface” is an interface that limits accessibility and includes within its scope a restricted API. D.” slip op. at 13
Patent outcomesUS 11,514,138 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,514,138 - Tvision Insights, Inc. v. The Nielsen Company (US), LLCAll claims unpatentablePTAB · Jan 6, 2025 · IPR2023-01014 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 4–6, 8, 11–14, and 18–20 are unpatentable as obvious over either Lu-577 and Tian or Nielsen-372, Steinberg, and Tian.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“B. Patent Owner’s Disclaimer of Claims 1, 9, and 16 As indicated above, Patent Owner filed a statutory disclaimer of claims 1, 9, and 16 of the ’243 patent. See Ex. 2002. In view of Patent Owner’s statutory disclaimer, we treat claims 1, 9, and 16 as having never been part of the ’243 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C. §] 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). And, because no inter partes review can be instituted based on disclaimed claims, we do not consider claims 1, 9, and 16 to be within the scope of this proceeding. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review in view of a statutory disclaimer of all” slip op. at 3
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner contends that” slip op. at 11
- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION34 Based on the entire trial record, Petitioner has demonstrated by a preponderance of the evidence that claims 4–6, 8, 11–14, and 18–20 of the ’243 patent are unpatentable. For the reasons stated above, we conclude that (1) the combination of Lu-577 and Tian and (2) the combination of Nielsen- 372, Steinberg, and Tian both render obvious the subject matter of claims 4– 6, 8, 11–14, and 18–20 of the ’243 patent. A summary of our conclusions is set forth in the table below.” slip op. at 92
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
“Pet. Reply 27 (second to fourth alterations in original). We agree with Petitioner and, accordingly, we reject this misdirected argument.31 Stated simply, Nielsen-372’s teaching of a system including a camera supports combining Nielsen-372’s teachings with a Steinberg’s method which uses a camera.” slip op. at 66
Patent outcomesUS 11,470,243 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,470,243
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.