• 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
• 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
• Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.Some claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00094 · APJ Mary C Hoffman · IPR · Final written decision

  Claims 1 and 3–5 are unpatentable over Kobayashi and Hshieh; claims 2 and 6 were not shown unpatentable over the asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”), “at the filing date of the ’409 [p]atent[,] would have a master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶ 52). Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art. PO Resp. 9 (citing Ex. 2021 ¶ 55). We adopt Petitioner’s proffered level of ordinary skill in the art, which is supported by unopposed declaration testimony and consistent with the ’409 patent and prior art of record. See, e.g., Ex. 1001, 1:6–3:8 (describing the invention and related art in terms of integrated circuit design and fabrication). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 10

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

    “Based on the arguments and evidence, we disagree with Petitioner’s proposed construction requiring the corners to be rounded via a particular process, because doing so would improperly import a process of manufacture from the Specification into apparatus claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019) (explaining that, generally, a novel product that meets the criteria of patentability is not limited to the process by which it was made, however, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention). Here, the portions of the Specification relied on by Petitioner (Ex. 1001, 2:10–20, 4:53–64) disclose a process for manufacturing but do not make clear that the process is an essential part of the claimed invention. We also disagree with Petitioner’s assessment of the prosecution history, i.e., that the claims were amended to distinguish the claimed rounded corners from Pfirsch’s rounded corners, which, presumably, are formed as an incidental result of lithography. On the contrary, the Examiner found (and Patent Owner acknowledged) that Pfirsch has rounded corners. Ex. 1002, 276, 295, 302. As Patent Owner correctly points out, the claims were amended during prosecution to include a “circular” contact to distinguish over Pfirsch’s square contact. See id. Petitioner does not otherwise point to evidence that Patent Owner clearly and unmistakably limited the claim scope to rounded corners formed by a particular process.” slip op. at 12

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

    “is ‘known’ is not sufficient for a motivation to combine.” PO Resp. 47. However, the motivation-to-combine analysis is a flexible one, and the “known-technique” rationale is adequate to show a motivation to combine. For example, “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; see also Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (“If there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.”). Here, as discussed above, the record shows that top view rounding was a known technique to eliminate corners, and that corners were a known problem (e.g., corners tend to reach undesirable higher peak electric field leading to premature breakdown voltage). See, e.g., Ex. 1003 ¶¶ 37, 39, 42– 44, 55–57, 122, 133, 135–141; Ex. 1005, 7:57–8:4; Ex. 1006, 1:18–21, 2:19–39, 5:3–17, Figs. 6A–8B; Ex. 1011, 1:29–41; Ex. 1012; PO Resp. 13, 46 (citing Ex. 1011, 1:34–40); Ex. 2021 ¶ 87. Furthermore, there is no dispute that modifying Kobayashi to eliminate corners via top view rounding was anything more than a “minor and commonplace modification” of cell shape within the skill of an ordinary artisan, or that top view rounding would change Kobayashi’s established function. Pet. 60; Ex. 2021 ¶ 86.” slip op. at 30

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “We agree that Kobayashi’ s Figure 5A solely cannot be relied upon as disclosing the claimed diameter. See Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (patent drawings not designated as being drawn to scale cannot be relied upon to define precise proportions of elements if the specification is completely silent on the issue). However, we do not agree that Petitioner failed to show Kobayashi suggests the recited diameter. We disagree with Patent Owner’s assertion that Dr. Liu’s “vague, purported ‘design considerations’” are “unsupported.” PO Resp. 43. Although Kobayashi is silent on the width/diameter of the trench contact in Figure 5A, Kobayashi discloses trenched gates having dimensions below 0.5 μm, which demonstrates that it was known in the art, and required no more than an exercise of ordinary skill in the art, to create trenched features of widths well below 1 μm. Kobayashi also discloses that the width of each trench, and the distance between the adjacent trenches (which includes the trench contact), must be selected to optimum sizes . . . [and] these sizes . . . have some degrees of freedom.” Ex. 1005, 7:42–48. This demonstrates a POSITA would seek to optimize trench contact width or diameter. Dr. Liu’s testimony regarding design considerations suggests the desirability of a reduced diameter trench contact, e.g., to minimize the width of the trench contact for purposes of easier filling, to minimize the total width of the unit cell, and to minimize manufacturing time by reducing etch back time. See Ex. 1003 ¶¶ 111–114. As Patent Owner acknowledges, “there is always a motivation to speed up the fabrication process or shrink feature sizes of semiconductors.” PO Resp. 43 (citing 2021 ¶ 131). However, contrary to Patent Owner’s arguments, these are not generic motivations “untethered” from Kobayashi. Id. Indeed, Kobayashi directly addresses the fabrication process (including new techniques to obtain trench widths under 0.5 μm) and the need to optimize the size of trench gates and the space in between (which includes the trench contact). Ex. 1005, 7:43–54, 7:19–9:53. Patent Owner also argues that Petitioner presents no evidence that modifying Kobayashi to have a diameter smaller than 1 μm is predictable. PO Resp. 44. We disagree. As discussed above, Petitioner points to Kobayashi’s teachings that the sizes are to be optimized and that the trench gate width is smaller than 0.5 μm, which suggests making other trench features of that width was within ordinary skill. Ex. 1003 ¶ 112. Furthermore, Kobayashi’s silence as to the dimensions of the trench contact suggests that the trench contact diameter dimension is likely in the ballpark of the other explicitly disclosed trenched feature dimensions and is a matter of routine optimization. In addition, Patent Owner advances no persuasive evidence that the claimed diameter produces unexpected results or is otherwise critical. Patent Owner also argues that reducing trench contact diameter has downsides (i.e., reduced ease of filling for metal plugs and reduced current carrying capacity) not addressed by Petitioner; however, Petitioner is not required to address those tradeoffs in its Petition, and we do not see how those tradeoffs would prevent the proposed combination. PO Resp. 44; see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”); Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Here, Dr. Liu listed numerous benefits of having a reduced diameter, which weigh against the potential downsides raised by Patent Owner. Ex. 1003 ¶¶ 111–114. Moreover, we do not see how the downsides/tradeoffs prevent modifying Kobayashi in the manner suggested when the same tradeoffs appear to be applicable to the ’409 patent. Having considered Patent Owner’s arguments, and taking into” slip op. at 43

  Patent outcomesUS 7,812,409 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,812,409
• Inductev, Inc. v. Witricity CorporationSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18, and 19 are unpatentable over the stated grounds; claims 4–6 were not shown unpatentable because the proposed multi-coil alignment lacked prior-art support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent and . . . two to three years of industry or research experience in the field of wireless energy transfer,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner does not contest this. See PO Resp. Petitioner’s proposed articulation is supported by testimonial evidence and appears to be consistent with the types of problems and solutions in the ’654 patent. See Ex. 1001, 1:15–28. We adopt it for this decision.” slip op. at 7

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

    “We agree with Petitioner that the evidence does not suggest (and Patent Owner does not explicitly argue) that the terms “transmitting antenna” and “receiving” antenna depart from the ordinary and customary meanings of those terms. Pet. 1–2. However, for the reasons discussed below, the outcome of our decision would be the same whether we adopted Petitioner’s or Patent Owner’s proposed construction. Thus, we need not adopt either party’s proposed construction for this decision. 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))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “spaced configuration are not confined to ferrite cores 32 and 3, and that at least a component of the flux lines will escape the cores. See Ex. 1032 ¶¶ 48–52; Ex. 1038 ¶ 54 Fig. 2. Indeed, the evidence suggests (and Dr. Horenstein acknowledges in his first declaration) that at least a component of flux will escape the core of even a traditional transformer. See Ex. 1032 ¶¶ 45–47; Ex. 1044, 6; Ex. 2001 ¶ 27. In his second declaration, Dr. Horenstein provides contrary testimony that in Odachi’s open configuration during alignment, cores 32 and 3 “act to confine or guide the magnetic flux lines, rather than radiate them into free space,” and “the flux lines would [not] leave the gap area and enter into the space distal to the magnetic circuit.” Ex. 2010 ¶ 69. But in view of Dr. Horenstein’s contrary position in his first declaration, and the lack of supporting evidence in his second, we do not find it credible. 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022).” slip op. at 24

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

    “(4) Analysis We are persuaded by Petitioner’s argument that during the alignment process in Odachi corresponding to claim 13, there is a “spaced distance between the primary inductive coupler [230] and the secondary inductive receptacle 2” which is “reduced gradually and electromagnetic induction occurs between the coupler to the receptacle when the former coupler comes close to the latter receptacle.” Ex. 1005, 6:1–6. Thus, prior to any contact or precise alignment between the two cores, “an electromotive force is induced in the secondary coil 4 and this induced force is increased with the decrease in the spaced distance.” Id. at 6:6–8. At least in that spaced configuration, the evidence of record suggests that primary coil 31 produces a near-field component of flux into free space (the air space between the coils where there is no intervening core material) that is intercepted by secondary coil 4 to effect resonant inductive coupling, and that secondary coil 4 intercepts and receives the near-field component of flux in free space that is generated by primary coil 31 to effect resonant inductive coupling. See Ex. 1032 ¶¶ 48–52, 55. Thus, we find that Odachi discloses a “transmitting antenna” (coil 31) and a “receiving antenna” (coil 4) under Patent Owner’s proposed construction. We would reach the same finding under Petitioner’s proposed broader construction because the evidence suggests that Odachi’s coils 31 and 4 would have been considered “antennas” under the parties’ uncontested definition of that term, which is “a device that radiates and/or receives radio waves.” See id. ¶¶ 43–47, 53–54; Ex. 1032 ¶ 15 (Dr. Allen agreeing with this definition of “antenna”); Ex. 2001 ¶ 25 (Dr. Horenstein agreeing with this definition of “antenna”)). In addition, Petitioner persuasively shows that the free space between Odachi’s coils in the spaced configuration includes the “near-field region,” which includes the induction field around primary coil 31. See Ex. 2006, 498; Ex. 1045, 5:4–7; Ex. 1032 ¶¶ 53–54). Dr. Horenstein’s testimony does not contradict this. Although he points out that there are separate terms for inductive, near, and far fields, he also acknowledges that “[t]he region of space closer to the antenna than the far field is the near-field region.” Ex. 2010 ¶ 37 (citing Ex. 2006, 275).8” slip op. at 22

  Patent outcomesUS 8,466,654 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,466,654
• Petitioner v. Unification Technologies LLCSome claims unpatentable
  PTAB · Jul 8, 2022 · IPR2021-00344 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 and 8–12 are unpatentable as obvious over Suda, and claims 22–26 are not shown unpatentable because their scope cannot be determined with reasonable certainty.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Construction Order construing various terms of the ’658 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” “data associated with the Not indefinite; plain and ordinary logical identifier [has meaning been/is] erased” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning “instructions configured to . . . recording persistent Not indefinite; not subject to §112(f); data . . . in response the plain and ordinary meaning indication” Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 19; Reply 3. Based on the full trial record, we interpret “logical identifier” in the same manner as the district court.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “No other claim terms require interpretation to decide the issues presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12

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

    “Third, with respect to the “module” and “instructions” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18–19; Reply 3–4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)). No other claim terms require interpretation to decide the issues” slip op. at 12

  Patent outcomesUS 8,762,658 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,762,658
• Lenovo Holding Company, Inc. / Lenovo (United States) Inc. et al. v. Interdigital Technology CorporationSome claims unpatentable
  PTAB · Apr 14, 2022 · IPR2020-01494 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–8, 10–12, 21–24, and 26 are unpatentable as obvious over Li and Tiedemann, with or without ETSI1997; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In its Response, InterDigital does not contest Dr. Acampora’s articulation of the level of ordinary skill, except that “InterDigital applies Petitioners’ alleged baseline level of ordinary skill without the phrase ‘at least.’” PO Resp. 3. We agree with InterDigital that the term at least arguably “creates unnecessary ambiguity.” Id. (citing Inst. Dec. 9–10). But we find that Petitioner’s articulation, after deleting the phrase at least, is reasonable in light of the subject matter involved in the ’449 patent, and we adopt it for our decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “To the extent that text was copied and pasted in either direction between the Petition and Dr. Acampora’s declaration, we disagree that this mere fact indicates that we should give Dr. Acampora’s testimony less weight. Patent Owner does not argue that Dr. Acampora was uninvolved with the preparation of his declaration, which he signed, under penalty of perjury, and presented as reflecting his own opinions. That typographical errors may, for example, have been propagated from his declaration to the Petition is by itself of little consequence. The cited Wowza decision does not suggest otherwise. In that case, the Board assigned little weight to the expert declaration, not because of its similarity to the petition, but because the declaration did not disclose the underlying facts or data on which its opinion testimony was based. See IPR2013-00054, Paper 16 at 4–5. As Petitioner correctly argues in its Reply, InterDigital does not “identif[y] where Dr. Acampora fails to provide sufficient facts underlying his opinions.” Pet. Reply 1 n.1.” slip op. at 20

  • Prior constructionPrior construction adoptedDecided for petitioner

    “1. “channel quality” InterDigital states that the court in the parallel district court litigation adopted the parties’ agreed construction of “channel quality” as meaning “a value/values quantifying how efficiently downlink resources of a channel can communicate information.” PO Resp. 3–4 (citing Ex. 2008, 1; Ex. 2009, 18). InterDigital contends that the ’449 patent suggests this construction, and that both sides’ experts agree with it. Id. at 4 (citing Ex. 1001, 1:36–61; Ex. 2001 ¶¶ 33–35; Ex. 2002, 21:14–22; Ex. 2007, 26:12–17). Because the meaning of this term is uncontested, and it is consistent with the evidence of record, we adopt the parties’ agreed construction. 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 11

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

    “For the above reasons, we determine that Petitioner has persuasively shown that a channel quality of the plurality of downlink resources and the related term a first channel quality indication for the plurality of downlink resources mean “a channel quality value related to the ‘plurality of downlink resources’ as a whole.” Pet. 11–13. We also determine that Petitioner has persuasively shown that both alternatives 8 and 9 reflect embodiments of this term, which is consistent with the district court’s construction that provides “a mean or reference value related to the plurality” as examples of a channel quality value related to the plurality of downlink resources as a whole, explicitly referencing alternative 9 in its analysis. See Ex. 2009, 12– 13.” slip op. at 18

  Patent outcomesUS 9,456,449 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,456,449
• Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentable
  PTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.

  RulingsFinal written decision

  • Expert testimonyOther

    “Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65

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

    “Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92

  • ExcludeMotion to exclude, deniedDenied

    “discussed below, the Motion is denied.” slip op. at 94

  Patent outcomesUS 9,007,015 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,007,015
• Valeo North America, Inc. / Valeo S.A. et al. v. Magna Electronics, Inc.Some claims unpatentable
  PTAB · Jan 25, 2016 · IPR2014-01204 · APJ Matthew R Clements · IPR · Final written decision

  Claims 51, 56, 57, and 59–61 are unpatentable as obvious; claims 12 and 13 were not shown unpatentable because Broggi did not teach ignoring edges not indicative of objects of interest.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “The premise of Patent Owner’s argument is that evidence that is not based on personal knowledge is not relevant. Personal knowledge is not a necessary condition of relevance. Rather, evidence is relevant if it has any tendency to make a fact more or less probable than it would be without the evidence and the fact is of consequence in determining this case. See FRE 401.” slip op. at 13

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

    “interpreted according to their broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015) (“Congress implicitly approved the broadest reasonable interpretation standard in enacting the AIA,” and “the standard was properly adopted by PTO regulation.”). Under the broadest reasonable interpretation, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In the Decision to Institute we determined that neither “algorithmically processes captured image data to a reduced data set” nor “target zone” required express construction. Dec. to Inst. 14–15. Neither party disputes our determination or proposes additional terms for construction.” slip op. at 22

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

    “upon a public use or a sale; rather, the ground must be based upon prior art in the form of a patent or a printed publication. 35 U.S.C. § 311(b); 35 U.S.C. § 102. The determination of whether a particular reference qualifies as a prior art printed publication “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Neither distribution nor indexing is a necessary condition for being a “printed publication;” rather, the key inquiry is whether or not a reference has been made “publically accessible.” Id. at 1348.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert, Dr. Frahm, provided testimony regarding the level of skill in the art. See Ex. 1013 ¶¶ 43–48. Although the level of skill in the art is not discussed in the Petition, Dr. Frahm acknowledged that obviousness is viewed from the perspective of a person of ordinary skill in the art, and applied that standard to his evaluations. Id. at ¶¶ 28–29. That is, Dr. Frahm’s evaluations of the grounds of unpatentability based on obviousness is based on the perspective of a person of ordinary skill in the art at the time of the claimed invention, and this analysis is cited and explained in the Petition. Patent Owner’s contention is unpersuasive, in part, because it does not address the merits of the level of skill in the art provided. The significance of the level of ordinary skill in the art is the role it plays in an obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). Patent Owner’s assertion fails to address how the level of skill in the art impacted the obviousness analysis.” slip op. at 35

  Patent outcomesUS 8,386,114 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 8,386,114
• Apple, Inc. / Domino’S Pizza, Inc. et al. v. Ameranth, Inc.Some claims unpatentable
  PTAB · Mar 20, 2015 · CBM2014-00013 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1, 2, 4, 5, 10, and 12 are unpatentable under § 101; claims 3, 6–9, 11, and 13–16 were not shown unpatentable because the petition did not establish their claimed features were conventional.

  RulingsFinal written decision

  • BurdenMixed

    “We are persuaded by Patent Owner’s argument. Petitioner states that the claimed linking is a “classic example[] of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.” Reply 15. However, Petitioner fails to provide sufficient evidence to support its statement. See Pet. 49–66; Reply 9–15. Petitioner provides insufficient evidence to establish that a menu having the functionality to perform the claimed linking from a GUI on a hand-held device, was well-known or conventional and merely require a general purpose computer. See id. Upon review, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 3 and 11 recite patent-ineligible subject matter.” slip op. at 37

  • Skill levelOther

    “B. Claim Construction The Board interprets claims of unexpired patents using the broadest reasonable construction in light of the specification of the patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard, claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Prior to construing the relevant claim limitations, we turn to some initial matters raised by Patent Owner. First, Patent Owner argues that we must construe “the entirety of the challenged claims” (PO Resp. 31), and proposes constructions for some, but not all, limitations of the challenged claims (see id. at 34–36). Claim construction, however, “is not an inviolable prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy). Below, we construe the limitations that are relevant to the issues of patent-eligibility discussed below. We determine that all other claim limitations need no explicit construction.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting where the claim body defines a structurally complete invention and the preamble only states a purpose or intended use for the invention. Id. slip op. at 11

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

    “We are persuaded by Petitioner that the broadest reasonable construction in light of the Specification of the term CPU is the computational and control unit of a computer. Petitioner’s construction is consistent with the Specification, which describes that the system of the ’733 patent uses typical hardware elements in the form of a computer workstation and that “a typical workstation platform includes hardware such as a central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033, col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium® microprocessor”). Further, Petitioner’s construction is consistent with the Specification, which as discussed above, discloses using a desktop PC to generate and download menus to a connected handheld device (see id. at col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed construction improperly reads into the claims the central back-office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should not be read into the claims). For these reasons, we determine that the broadest reasonable construction, in light of the Specification, of CPU is the computational and control unit of a computer.” slip op. at 15

  Patent outcomesUS 6,982,733 mixed
  Claim construction§ 101 eligibilitycites Alice · Mayo
  Patents in suitUS 6,982,733
• Toyota Motor Corp. v. Leroy G. HagenbuchSome claims unpatentable
  PTAB · Mar 3, 2015 · IPR2014-00124 · APJ Jameson Lee · IPR · Final written decision

  Claims 15–20, 23, and 24 are unpatentable as obvious over Aoyanagi, Vollmer, and Steiner; claims 21 and 22 were not shown unpatentable over the four-reference ground.

  RulingsFinal written decision

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Obviousness is a legal determination based on underlying factual inquiries including (1) the scope and content of the prior art, (2) the differences between the prior art and the claimed invention, (3) the level of ordinary skill in the art, and (4) secondary considerations of nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). The level of ordinary skill in the art need not always be expressly defined. It can be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

  • Prior constructionPrior construction not adoptedDecided for patent owner

    “After institution of trial, neither party disputed the above-noted claim construction. Upon review of the full record, we have no reason to deviate from them, except for the construction of the term “second memory.” We did not intend to suggest that a memory address is the same as a memory. Accordingly, the construction of “second memory” is revised to: “any memory space separate from a first memory space.”” slip op. at 8

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

    “parameters for monitoring and recording. Ex. 1103, 71. Although Aoyanagi states that these parameters “are not always necessary but just illustrative,” (id. at 71) that statement does not take away from or diminish Aoyanagi’s specific disclosure of the 15 vehicle parameters to monitor and record. What Aoyanagi illustrated, as an embodiment, is the monitoring and recording of all 15 vehicle parameters. That Aoyanagi also indicates that all 15 parameters “are not always necessary” merely adds to and expands its disclosure of an embodiment that monitors and records all 15 vehicle parameters. Hagenbuch’s argument is misplaced, that Toyota has not shown that one with ordinary skill in the art would have selected the particular combination of parameters to monitor and record, as required by claim 15, i.e., the ground speed of the vehicle, engine throttle position of the vehicle, braking system on/off status, seat belt status, and information indicative of a change in the velocity of the vehicle, such as acceleration and deceleration. The argument is misplaced, because claim 15 does not limit or restrict the monitoring and recording to only those parameters expressly recited in the claim or prohibit the monitoring and recording of other vehicle parameters. The claim feature relating to what vehicle parameters to monitor and record reads on prior art that monitors and records the identified parameters, whether or not additional vehicle parameters also are monitored and recorded. On the basis of its embodiment that monitors and records all 15 vehicle parameters, Aoyanagi is such prior art. No picking or choosing is involved or necessary.” slip op. at 15

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

    “In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. KSR, 550 U.S. at 418. A basis to combine teachings need not be stated expressly in any prior art reference. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). There need only be an articulated reasoning with rational underpinnings to support a motivation to combine teachings. Id. at 988. Toyota’s stated rationale does have rational underpinnings and are straightforwardly logical. Vollmer teaches that in case of a crash or accident, sending a wireless distress signal to summon help decreases the time before emergency services are notified, and that automatically sending a distress signal avoids the difficulties a person may have, in case of a crash or accident, in manually making a call. Pet. 13. That purpose and objective, as a motivation to incorporate automatically sending a distress signal in response to detection of a collision, is applicable to any onboard device that detects a collision, such as Aoyanagi’s system, regardless of what other functions are performed by the onboard device. In any event, the data monitoring and recording function of Aoyanagi are not unlike those performed by the system of Vollmer. As we have discussed above, Vollmer’s distress signal includes monitored information such as the vehicle’s position, the number of passengers in the vehicle, the seat positions, speed and deceleration measurements, and whether the vehicle was proceeding against traffic.” slip op. at 23

  Patent outcomesUS 8,532,867 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,532,867

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.