• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentable
  PTAB · Sep 1, 2026 · IPR2023-00220 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–5, 7–13, and 16 are unpatentable as obvious over the asserted prior art; a separate ground was not reached because those claims were shown obvious on other grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic displays, including the thermal management, product design issues, and failure modes associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes associated with electronic displays. Dec. 7–8. The parties’ positions have not changed from those we considered in the Institution Decision, and neither party argues that the outcome of this case would differ based on our adoption of a particular level of ordinary skill in the art. Thus, we apply the same definition in this Decision. Our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s proposed definitions, however, and we note that our conclusion would be the same under either definition.” slip op. at 8

  • ExcludeMotion to exclude, deniedDenied

    “new evidence filed by Patent Owner with its Sur-reply in contravention of 37 C.F.R. § 42.23(b). Paper 47, 1–5. We do not rely on either of these exhibits in rendering this Decision. Accordingly, we dismiss as moot Petitioner’s Motion to Strike.” slip op. at 73

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “that Patent Owner fails to adduce evidence showing how the claimed invention satisfied the alleged need for effective outdoor cooling. See Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (holding that a proponent of objective evidence of long-felt need must show that “the claimed invention satisfied a long felt need”). Patent Owner states in conclusory fashion that “[d]espite the demand for outdoor displays, no one (including Samsung, despite having attempted to develop outdoor displays at least by 2005) was successful until Mr. Dunn conceived of his invention.” PO Resp. 75. Patent Owner cites no evidence for this proposition, so Patent Owner’s assertions regarding Mr. Dunn’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 64

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner

    “objective indicia of nonobviousness (i.e., secondary considerations) may lead to a conclusion that the challenged claims would not have been obvious. See, e.g., Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983) (instructing that evidence of secondary considerations, when present, must always be considered in determining obviousness). Objective evidence of nonobviousness may include evidence of commercial success, licensing, copying, praise by others, long felt but unresolved need, and” slip op. at 58

  Patent outcomesUS 9,173,322 unpatentable
  § 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,173,322
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentable
  PTAB · Aug 31, 2026 · IPR2023-00199 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4, 7, and 8 are unpatentable as obvious over Na and Kim (claim 1) and Na and Hong (claims 4, 7, and 8); other grounds were not reached.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Manufacturing Resources International, Inc. (“Patent Owner” or “MRI”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on June 20, 2023, as to all challenged claims and all grounds of unpatentability presented in the Petition. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s Motion to Strike Petitioner moves to strike Exhibits 2055, 2056, and 2058–2061 as being improper new evidence filed by Patent Owner with its Sur-reply in contravention of 37 C.F.R. § 42.23(b). Exclude Mot. 1–5. We have not relied on any of these exhibits in rendering this Decision. Accordingly, we dismiss as moot Petitioner’s Motion to Strike.” slip op. at 73

  • Skill levelSkill level board ownDecided for patent owner

    “record, we adopted the following definition of the level of ordinary skill in our Decision on Institution: [A] POSITA would have had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic displays, including the thermal management, product design issues, and failure modes, associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes, associated with electronic displays. Dec. on Inst. 11. The parties’ positions have not changed since the time of institution, and we discern no reason to change the definition. Thus, we apply the same definition. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’595 patent and the asserted prior art. Notwithstanding, we note that our analysis would not change if we adopted either party’s proposed definition in toto.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “appear nowhere outside of the claims in the ’595 patent. This fact alone tends to undermine Patent Owner’s suggestion that the “posterior surface” must be distinct from the “rear side.” In addition, Patent Owner’s cited portions of the Specification merely refer to the “posterior surface” as being the surface opposite that on which the LEDs are mounted to which heat from the LEDs is transferred. See Ex. 1001, 4:53–55, 4:57–60. They are inconclusive as to whether the “posterior surface” must be distinct from the “rear side.” Further, Mr. Gershowitz’s testimony in support of a “distinct” construction is based on his interpretation of the words “on the” in claim 4’s recited “posterior surface on the rear side of the PCB.” Ex. 2006 ¶ 128. Specifically, he testifies that “[i]f the posterior surface was the rear side of the PCB, the claim would have said so.” Id. He does not cite any support in the Specification of the ’595 patent for his interpretation. See id. Given that his testimony amounts to speculation divorced from the context of the Specification, Mr. Gershowitz’s testimony is entitled to little weight. We also have considered Mr. Smith-Gillespie’s testimony in support of Petitioner’s contention that an ordinarily skilled artisan “would have understood that the rear outermost surface of the PCB is the recited ‘posterior surface.’” Pet. Reply 20 (citing Pet. 83; Ex. 1002 ¶ 243). He cites a passage in the Specification of the ’595 patent that states: “The PCB may comprise a metal core PCB and the posterior surface of the PCB may be metallic so that air within the constricted convection channel may cool the metallic posterior surface (and subsequently the backlight assembly) more easily and efficiently.” Ex. 1002 ¶ 243 (emphasis omitted) (quoting Ex. 1001, 4:60–65). We accord Mr. Smith-Gillespie’s testimony more weight than Mr. Gershowitz’s testimony given that Mr. Smith-Gillespie’s testimony is rooted in disclosures about metal core PCBs in the ’595 patent. It also gives some credence to the notion that the “posterior surface” and the “rear side” could be one and the same. Based on the record before us, we do not agree with Patent Owner that” slip op. at 19

  Patent outcomesUS 8,854,595 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,854,595
• Align Technology, Inc. v. Dental Monitoring SASAll claims unpatentable
  PTAB · Mar 3, 2025 · IPR2023-01369 · APJ Jean R Homere · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over Salah, Carrier, and Maninis; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “Ex. 1002 ¶ 6; Ex. 1003, 12–13; see also Ex. 1002 ¶ 7 (describing a project that “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans”). Therefore, we find on this record that Dr. Foroosh qualifies to testify from or about the perspective of a POSITA, and further meets the requisite qualifications to opine on the prior art relied upon in the challenge of the ’409 patent. Accordingly, we disagree with Patent Owner’s assertion that Dr. Valley’s testimony regarding the dental nature of the references in the Petitioner’s challenge includes disclosures that Dr. Foroosh did not understand when forming his opinions. PO Sur-Reply 3–4 (citing Ex. 1035 ¶¶ 34, 41–44; Ex. 2053, 38:18–39:6, 64:5–67:19; Ex. 2048, 130:8–11, 143:22–145:10, 149:19–22).” slip op. at 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1002 ¶ 6; Ex. 1003, 12–13; see also Ex. 1002 ¶ 7 (describing a project that “was directed to the registration/alignment of dental CT scans of patients over a period of time during the treatment of a patient, with the purpose of improving the quality of 3D models, e.g., corrections and noise removal in 3D CT scans”). Therefore, we find on this record that Dr. Foroosh qualifies to testify from or about the perspective of a POSITA, and further meets the requisite qualifications to opine on the prior art relied upon in the challenge of the ’409 patent. Accordingly, we disagree with Patent Owner’s assertion that Dr. Valley’s testimony regarding the dental nature of the references in the Petitioner’s challenge includes disclosures that Dr. Foroosh did not understand when forming his opinions. PO Sur-Reply 3–4 (citing Ex. 1035 ¶¶ 34, 41–44; Ex. 2053, 38:18–39:6, 64:5–67:19; Ex. 2048, 130:8–11, 143:22–145:10, 149:19–22).” slip op. at 13

  • ExcludeMotion to exclude, deniedDenied

    “by Petitioner, we find that Petitioner has demonstrated by a preponderance of the evidence that Exhibits 1022, 1023, 1025, and 1026 are true and accurate versions of documents downloaded using the Internet Archive’s Wayback Machine. Accordingly, we are satisfied that Exhibits 1022, 1023, 1025, and 1026 have thereby been authenticated by the testimony of Mr. Frank-White. Ex. 1031. For these reasons, we decline to exclude or disregard Exhibits 1022, 1023, 1025, and 1026 as lacking authenticity.” slip op. at 72

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “prior art under AIA § 102, we only need to determine whether the provisional application describes the subject matter in the non-provisional application relied upon by Petitioner. Stated differently, the holding in Dynamic Drinkware as to whether a claim in the non-provisional has sufficient written description support in the provisional application does not apply to an AIA § 102 reference, such as Carrier. Id. at 31–33. Accordingly, we do not agree with Patent Owner that “the reasoning and statutory interpretation in Dynamic Drinkware still controls.” PO Sur-Reply 4. Because Petitioner provides in the Petition citations to where the Carrier Provisional describes the subject matter relied upon in Carrier (Pet. 10), and Patent Owner does not persuasively argue in the Response or the Sur-Reply that Petitioner’s proffered support is deficient, we agree on this record that the subject matter of Carrier that Petitioner relies upon for its challenge, which also appears in the Carrier Provisional, is prior art to the claims of the ’409 patent. Consequently, we disagree with Patent Owner’s argument regarding the alleged lack of written description support in the Carrier provisional for a user (as opposed to a dental professional) using a mobile device to capture dental images (PO Resp. 24; Sur-Reply 5–6) because Petitioner does not rely on Carrier for such a feature, which is not even recited in the challenged claims. Accordingly, on the record before us, we determine that the subject matter from Carrier upon which Petitioner’s challenge is based qualifies as prior art to challenged claims of the ’409 patent.” slip op. at 28

  Patent outcomesUS 10,755,409 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,755,409
• Docusign, Inc. v. Paul C. ClarkAll claims unpatentable
  PTAB · Oct 25, 2023 · IPR2022-00924 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–3 are unpatentable: claim 1 as obvious over Duncan and Gilbrech, and claims 2–3 as obvious over Duncan.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in computer network security, computer science, computer engineering, or a related field, with at least two years of professional experience working in computer and network security. . . . With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. . . . Similarly, with more experiential knowledge of computer and network security, such as experience developed while developing client-server networks, less professional experience is needed to attain the ordinary level of skill. Id. (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s assessment of the level of ordinary skill in the art. PO Resp. 2. We accept 2 Patent Owner does not identify any secondary considerations to be considered. See PO Resp. is supported by the Black Declaration and is consistent with the ’957 patent and the asserted prior art. We apply this assessment in our obviousness analysis below.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “Petitioner’s asserted alternative construction, that it could be either a network level or an application level protocol, is inconsistent with the prosecution history. During prosecution of a parent application, the Examiner pointed to Zarom’s conversion of certain instructions as converting from one network application level protocol to a target application level protocol. Ex. 1002, 93; Sur-reply 7 (citing Ex. 1009 (prosecution history of U.S. Application 09/568,215), 191, 371). However, during an interview with Dr. Clark (the applicant), the Examiner agreed with Dr. Clark that Zarom’s teaching was directed to VPN (“Virtual Private Network”) level protocols, which did not teach the newly amended “network application level protocol.” Ex. 2003 (prosecution history of U.S. Application 13/532,246), 41; Ex. 2002 ¶ 15. Therefore, we do not adopt Petitioner’s alternate construction. 3 Patent Owner seeks to incorporate argument from its Preliminary Response; however, our rules do not permit such incorporation by reference. 37 C.F.R. § 42.6(a)(3). explicitly exclude either a network level protocol or an application level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Inventor and Declarant Dr. Clark indicated in an interview during prosecution that network application level protocols would include “SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009 (prosecution history of U.S. Patent Application No. 09/568,215 (“the ’215 application”)), 192; Ex. 1003 ¶ 71. Dr. Black states that SSL (Secure Sockets Layer) is not an application level protocol, although the other listed protocols are application level protocols. Ex. 1003 ¶ 78. We additionally note that, during prosecution of the ’215 application, the ultimate parent of the ’957 patent, Patent Owner stated that “network application level protocol” translation includes translating “http to https.” Ex. 1009, 200, 220–21. Patent Owner confirmed this statement at oral argument. Tr. 26:15–27:3.” slip op. at 9

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

    “Ex. 1024, 74:20–75:5. Although Patent Owner argues that there is a distinction between “convert” and “translate” in this context, the weight of the evidence strongly points to the interchangeability of these terms, and thus, by a preponderance of the evidence, supports Petitioner’s contention that Duncan teaches the claimed translating of data. With respect to the translation occurring from one protocol to a target protocol, Petitioner points to Duncan’s teaching of “protocol converters,” including protocol converters 61 and 71. Pet. 27–28; Pet. Reply 12. Petitioner’s assertion that a protocol converter would be understood by a person having ordinary skill in the art as converting between protocols is corroborated by Dr. Black, who emphasizes that Duncan’s protocol converter is “converting the information according to the network protocol employed,” and opines that the protocol converter converts the data from the HTTP application protocol of the browser to a network protocol of the server. Ex. 1003 ¶ 153. Dr. Black’s testimony is supported by Duncan’s HTTP, used by a browser, can “differ fundamentally” from another network protocol 33 that is used by a server. Ex. 1004, 8:55–9:3. Although this description does not specifically address the interactions at protocol converters 61 and 71, we credit Dr. Black’s testimony as supporting that Duncan contemplates conversion to a different protocol in appropriate circumstances.” slip op. at 20

  • ExcludeMotion to exclude, deniedDenied

    “accompanying that evidence. Petitioner acknowledges that the Federal Rules of Evidence sets the standard for relevant evidence as that which “has a tendency to make a fact more or less probable than it would be without the evidence” and that “the fact is of consequence in determining the action.” Paper 25, 2 (citing Fed. R. Evid. § 401). Yet, Petitioner has not attempted to explain why any particular statement in the portions that it identifies as irrelevant meets that standard. Instead, Petitioner asks that we infer a lack of relevance because the Patent Owner did not cite particularly to those sections of the evidence in its Response. We decline to create such an inference to replace the fact-specific analysis of § 401. None of Petitioner’s PTAB citations, which as non-precedential decisions we need consider for their persuasive value but are not bound by, set forth such a rule. Each of those cases instead addressed the evidence on its facts. For example, in St. Jude, the Board explained that demonstrative exhibits, although in the record, were not evidence, and “as such, the exhibits cannot add new evidence to the proceeding.” St. Jude, IPR2013- 00041, Paper 65, at 2. The Board in St. Jude was explaining that demonstrative exhibits are not an opportunity for additional briefing. Id. at 2–3. Petitioner’s objections are not made with respect to demonstrative exhibits. Further, the disputed portions of Exhibit 2006 were admittedly relied upon in Patent Owner’s Sur-reply. Therefore, the reasoning of St. Jude is inapposite to the instant situation.” slip op. at 31

  Patent outcomesUS 9,391,957 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,391,957
• Docusign, Inc. v. Paul C. ClarkAll claims unpatentable
  PTAB · Oct 25, 2023 · IPR2022-00923 · APJ Michael T Cygan · IPR · Final written decision

  Claim 1 is unpatentable as obvious over Duncan, RFC 793, and RFC 1323; the Board did not reach the alternative Grosser ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time the ’066 patent was filed. Pet. 13. Relying upon the Black Declaration, Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in computer science, or a related field, with at least two years of professional experience working in network engineering. With more education, such as additional graduate degrees or study, less professional experience is needed to attain the ordinary level of skill. Similarly, with more experiential knowledge of computer networks, such as experience developed 2 Patent Owner does not identify any secondary considerations to be considered. See PO Resp. while developing client-server networks, less professional experience is needed to attain the ordinary level of skill. Id. (citing Ex. 1003 ¶ 26). Patent Owner does not contest Petitioner’s assessment of the level of ordinary skill in the art. PO Resp. 2. Based on the fully developed trial record, we accept the assessment offered by Petitioner and uncontested by Patent Owner as it is supported by the Black Declaration and is consistent with the ’066 patent and the asserted prior art. We apply this assessment in our obviousness analysis below.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “network level or an application level protocol, is inconsistent with the prosecution history. During prosecution, the Examiner pointed to Zarom’s conversion of certain instructions as converting from one network application level protocol to a target application level protocol. Ex. 1002, 49. However, during an interview with Dr. Clark (the applicant), the Examiner agreed with Dr. Clark that Zarom’s teaching was directed to VPN (Virtual Private Network) level protocols, which did not teach the newly 3 Patent Owner seeks to incorporate argument from its Preliminary Response; however, our rules do not permit such incorporation by reference. 37 C.F.R. § 42.6(a)(3). amended “network application level protocol.” Id. at 40. Therefore, we do not adopt Petitioner’s alternative construction. In adopting Patent Owner’s construction, we note that it does not explicitly exclude either a network level protocol or an application level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Inventor and Declarant Dr. Clark indicated in an interview during prosecution that network application level protocols would include “SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009 (prosecution history of U.S. Patent Application No. 09/568,215 (“the ’215 application”)), 192; Ex. 1003 ¶ 71. Dr. Black states that SSL (Secure Sockets Layer) is not an application level protocol, although the other listed protocols are application level protocols. Ex. 1003 ¶ 71. We additionally note that, during prosecution of the ’215 application, the ultimate parent of the ’066 patent, Patent Owner stated that “network application level protocol” translation includes translating “http to https.” Ex. 1009, 220. Patent Owner confirmed this statement at oral argument. Tr. 26:15–27:3.” slip op. at 10

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

    “on the front page of each document, the well-known nature of the standards documents, the statement of Dr. Black that he personally accessed the documents before the critical date and that each was published on the listed date, and the statements of Ms. Ginoza averring that both RFC documents were “indexed and placed in a public repository,” that RFC 793 was reasonably accessible to the public no later than October 1992, and that RFC 1323 was reasonably accessible to the public no later than May 1992. Paper 6, 6–7, Ex. 1020 ¶¶ 4–7; Ex. 1018 ¶¶ 6–12. We determine that the totality of the evidence indicates that Petitioner has shown, by a preponderance of the evidence, that the reference was available to, and able to be located by, persons interested and ordinarily skilled in the subject art on or before the critical date of the ’066 patent. Accordingly, Petitioner has met its burden to show both documents are prior art. 3. Conclusion Based on the fully developed trial record, we determine Petitioner has demonstrated that these references are prior art patents or printed publications under 35 U.S.C. § 102. See Pet. 3, 16; Ex. 1004, codes (22), (43); Ex. 1006, codes (22), (43).” slip op. at 6

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

    “2. Analysis Upon review of Petitioner’s assertions in its Petition, Petitioner’s Reply, and its supporting evidence, and Patent Owner’s arguments in its Response, Sur-reply, and its supporting evidence, we are persuaded that Petitioner has met its burden to show that the combined teachings of Duncan, RFC 793, and RFC 1323 render obvious the challenged claim. Petitioner provides claim mappings of each individual limitation of the challenged claim to the combined teachings. Pet. 19–33. Patent Owner argues only against Petitioner’s assertions for limitation [1.6]. See PO Resp. For the reasons stated below, we determine that the asserted prior art teaches each limitation of claim 1.” slip op. at 13

  Patent outcomesUS 8,695,066 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,695,066
• Docusign, Inc. v. Paul C. ClarkAll claims unpatentable
  PTAB · Oct 25, 2023 · IPR2022-00925 · APJ Jason W Melvin · IPR · Final written decision

  Claim 1 is unpatentable as obvious over Duncan; the Board did not reach the Grosser and Duncan ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends, and Patent Owner does not contest, that a person of ordinary skill in the art would “have had a bachelor’s degree in computer network security, computer science, computer engineering, or a related field, with at least two years of professional experience working in computer and network security.” Pet. 14; PO Resp. 2. We adopt that definition, as it is consistent with the ’214 patent’s description and the asserted prior art.” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “The ’214 patent’s prosecution history confirms the correct construction for “network application level protocol.” The applicant argued that an interview during prosecution of U.S. Patent Application No. 09/568,215 (“the ’215 application”)4 established that the prior art at issue, Zarom,5 “discusses operations at the VPN level, not the application level.” Ex. 1002, 47–48. The examiner allowed the claim, expressly accepting the applicant’s characterization of Zarom’s protocols. Id. at 34. Thus, the ’214 patent’s claim was issued based on its scope requiring an application-level protocol. In adopting Patent Owner’s construction, we note that it does not exclude either a network-level protocol or an application-level protocol, so long as the protocol “functions at the application level and is intended to transfer data over a network.” Named inventor and Patent Owner’s expert, Dr. Clark, indicated in an interview during prosecution of the ’215 application that “network application level protocols include but are not limited to SSL, SSH, SCP, X.400, SMTP, POP, HTTP, and Telnet.” Ex. 1009, 192; Ex. 1003 ¶ 73. Petitioner’s expert, Dr. Black,” slip op. at 7

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

    “translate.” Pet. Reply 12 (citing Ex. 1024, 34:19–35:2; Ex. 2006 ¶¶ 18, 20; Ex. 1025 ¶¶ 19–21). We agree. Patent Owner’s expert and the ’214 patent’s named inventor, Dr. Clark, testified unambiguously that he used “convert” and “translate” synonymously. Ex. 1024, 34:19–36:6; see also Ex. 2006 ¶¶ 18, 20 (using “convert” to describe the ’214 patent’s process). Petitioner’s expert, Dr. Black, explains that the ’214 patent and other record evidence support understanding conversion and translation as synonyms. Ex. 1025 ¶¶ 19–24. Thus, we find that Duncan’s protocol converters act to translate protocols used for requests and replies between Duncan’s browser and server. slip op. at 11

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s motion is not persuasive. We see nothing wrong with Patent Owner citing portions of a declaration for the first time in its Sur-Reply. Petitioner had the opportunity to cross examine Dr. Clark on the contents of his declarations, including portions that were not cited in the Patent Owner Response. And while our rules prohibit most new evidence in a sur-reply, they do not prohibit relying on evidence already of record. 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.”).” slip op. at 15

  Patent outcomesUS 10,129,214 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,129,214
• Vivint, Inc. v. SB IP Holdings LLCAll claims unpatentable
  PTAB · Oct 19, 2023 · IPR2022-00810 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1–10 and 13–21 are unpatentable: Vaios anticipates some claims, and the listed Vaios, Klein, and Naidoo-068 combinations render the remaining claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8 (citing Ex. 1002 ¶¶ 21–24). Patent Owner responds that “Petitioner and its expert rely on conclusory statements regarding a person of ordinary skill in the art” such that Dr. “Hochwald’s conclusory opinion should be given no weight.” PO Resp. 4–5 (citing Ex. 1002 ¶¶ 21–24). Notwithstanding Patent Owner’s arguments, Dr. Hochwald declares that “[a]ll of the opinions contained in this declaration are based on the documents I have reviewed and my professional judgment, as well as my education, experience, and professional knowledge.” Ex. 1002 ¶ 17. Such documents include the “’098 patent (EX1001), the prosecution history of the ’098 patent (EX1017), the prior art references cited herein, and other Hochwald bases his proposed level of ordinary skill on the relevant documents. Moreover, Patent Owner does not offer a proposed level of ordinary skill in the art or even argue that a different level would result in a different analysis by Dr. Hochwald or any other declarant. See id. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’098 patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached

    “Phillips. See Pet. 7–8. The parties disagree over whether the preamble is limiting. Compare PO Resp. 2–3 (arguing the preamble is limiting), with Reply 2–3 (arguing that “‘for receiving a person at an entrance’ clearly states an intended purpose of the invention”). As the analysis of the grounds art renders the claims unpatentable.” slip op. at 9

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

    “In any event, even if we generally adopt what Patent Owner refers to as an agreed upon plain and ordinary meaning and construe “detecting a person at the entrance” as limited to “detecting a person at an exterior,” and further construe “exterior” as referring to the exterior of an area defined by some type of a “demarcation line” according to the ’098 patent’s description of Figure 1 (see Ex. 1001, 6:40–50), the Petitioner persuasively shows that the prior art teaches the limitation (including when the “demarcation line” defines the exterior of a building), as discussed further below. Accordingly, it is not necessary to explicitly construe the limitation any further or to construe any other claim terms, because any construction would not impact the analysis of Petitioner’s asserted grounds. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “shows that the ’384 provisional does not contemplate transmitting “video of the person at the entrance” to a “remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance,” using “a graphic user interface,” as claim step 1c requires. Disclosure in the ’384 provisional of a generic laptop or other remote peripheral device that may be capable of viewing video in isolation is not possession of the claimed invention. In other words, as Petitioner persuasively shows, “[c]ommunication of actual video to the remote peripheral device was not countenanced in the provisional, and [Patent Owner] fails to identify evidence to the contrary.” Id. at 9. That is, as Petitioner also argues, “[w]ritten description support is not established simply by identifying peripheral devices such as PDAs and laptop[s] in the provisional and arguing that such devices were ‘capable of’ displaying video, nor by the provisional’s disclosure of ‘communications’ between the central computer and said peripheral devices.” Id. at 8–9 (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1331–32 (Fed. Cir. 2008)). Under the rationale and holding of Tech. Licensing Corp., even if “a person skilled in the art might conclude” that the ’384 provisional’s disclosed system is capable of performing the same function of viewing the particular video at a remote peripheral device, this is not enough to show adequate written description. See id. at 1334 (“This evidence persuaded the trial court that a person skilled in the art might conclude that R21 and R26 establishing a level shifted signal [as recited in the ’250 patent claims at issue], but that was all,” and that evidence is insufficient to satisfy written description for a level shifted signal), 1333–34 (“The pertinent question is not whether a person skilled in the art could look at both Figure 3 [from the earlier-filed ’323 application] and Figure 16 [from the ’250 patent at issue] and determine that the resistors in the former perform a similar function to the resistors in the latter. Rather, the issue is whether a person skilled in the art would understand from the earlier application alone, without consulting the new matter in the ’250 patent, that the inventor had possession of the claimed ‘other circuit’ in 1992 when the ′323 application was filed.”). Even if there is a disclosure in the ’384 provisional of a system that merely is capable of providing for the viewing of live streaming or recorded video at the remote peripheral device of “the person at the entrance,” this still is not sufficient written description for claim 1, step 1c. Rather, claim 1 requires “a graphic user interface” (which facilitates and controls the viewing) at “the remote peripheral device,” because it requires “providing a [GUI] to a remote peripheral device by which a user of the remote peripheral device may view the video of the person at the entrance.”14 There is no disclosure in the ’384 provisional for providing a GUI to a remote peripheral device. See Inst. Dec. 9 (indicating a lack of showing as to the claimed” slip op. at 19

  Patent outcomesUS 8,139,098 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,139,098
• Amazon.Com, Inc. / Amazon Web Services, Inc. v. Swarm Technology LLCAll claims unpatentable
  PTAB · Jun 20, 2023 · IPR2022-00283 · APJ Scott B Howard · IPR · Final written decision

  Claims 1–12 are unpatentable over the stated §103 grounds; substitute claims 13 and 14 are denied because they add new matter and are patent ineligible under §101.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 10

  • BurdenUnpatentable

    “IV. CONCLUSION33 For the foregoing reasons, we conclude that Petitioner has demonstrated by a preponderance of the evidence the unpatentability of claims 1–12 of the ’004 patent. Specifically, Petitioner has demonstrated by a preponderance of the evidence that (1) claim 1 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie; (2) claims 2, 3, and 6–11 would 32 Patent Owner also addresses Petitioner’s argument based on the “[b]ag-of-[t]asks.” MTA Reply 11–12. Because we do not rely on Petitioner’s arguments relating to the bag of tasks, Patent Owner’s counter-arguments are moot. 33 Should Patent Owner wish to pursue amendment of the challenged claims in a reissue or reexamination proceeding subsequent to the issuance of this decision, we draw Patent Owner’s attention to the April 2019 Notice Regarding Options for Amendments by Patent Owner Through Reissue or Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application or a request for reexamination of the challenged patent, we remind Patent Owner of its continuing obligation to notify the Board of any such related matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2). Specification; (3) claims 4 and 5 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie, Ethernet Specification, and Sander; and (4) claim 12 would have been obvious under 35 U.S.C. § 103(a) in light of Lurie, Ethernet Specification, and Chow. Additionally, we deny Patent Owner’s Contingent Motion to Amend because proposed substitute claims 13 and 14 recite new matter and are not patent eligible under 35 U.S.C. § 101.” slip op. at 103

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

    “Accordingly, Petitioner sufficiently shows that, under its first theory,” slip op. at 28

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

    “11 There is no dispute that Lurie teaches a processing system. Accordingly, we need not decide whether the preamble is limiting. 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 24

  Patent outcomesUS 9,852,004 unpatentable
  Claim construction§ 103 obviousnesscites Mayo · Bilski · Berkheimer · Phillips · KSR · Graham
  Patents in suitUS 9,852,004
• PNC Bank, N.A. v. United Services Automobile AssociationAll claims unpatentable
  PTAB · Jan 19, 2023 · IPR2021-01073 · APJ Scott B Howard · IPR · Final written decision

  The Board held claims 1–6, 9, 10, 12, and 13 unpatentable as obvious: claims 1–3, 6, 9, 10, and 13 over Acharya and Luo; claims 4 and 5 with Nepomniachtchi; claim 12 with Yoon.

  RulingsFinal written decision

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

    “monitoring and capture module” denotes structure. Although Dr. Mowry states that “the Board was correct to construe ‘image monitoring and capture module’ according to its plain meaning instead of the district court’s meansplus-function construction when it instituted this IPR,” his opinion is conclusory without any supporting analysis. See Ex. 1036 ¶ 42. Accordingly, we give it no weight on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Instead, we are guided by the Federal Circuit, which held that “‘[m]odule’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of § 112, para. 6.” Williamson, 792 F.3d at 1350. Such a generic description of software “may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. (quoting Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) (citing Manual of Patent Examining Procedure § 2181)). In this proceeding, the term “module” does not provide any indication of structure and is the equivalent of using the term means. monitoring and capture” denotes any structure. Instead, as the Texas court held, those words do no more than denote the function performed by the generic module. See Ex. 1034, 62. Nor has Petitioner identified anything in the specification or prosecution history of the ’571 patent that might lead us to construe that expression as the name of a sufficiently definite structure so as to take the overall claim limitation out of the ambit of § 112, para. 6. See Pet. Reply. That is, the presence of these particular terms does not provide any structural significance to the term “module” in this case. Accordingly, we conclude that (1) words “image monitoring and” slip op. at 18

  • Expert testimonyPetitioner expert discountedOther

    “monitoring and capture module” denotes structure. Although Dr. Mowry states that “the Board was correct to construe ‘image monitoring and capture module’ according to its plain meaning instead of the district court’s meansplus-function construction when it instituted this IPR,” his opinion is conclusory without any supporting analysis. See Ex. 1036 ¶ 42. Accordingly, we give it no weight on this point. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 18

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner’s Response or Petitioner’s Reply.” Inst. Dec. 45 n.20. Neither party argued that the preamble was not limiting and, instead, argued whether the prior art taught a portion of the preamble. See PO Resp. 35–45 (arguing prior art does not teach “depositing a check”); Pet. Reply 19–28 (treating “depositing a check” as limiting). Accordingly, we treat the preamble as limiting in the absence of any argument to the contrary.” slip op. at 57

  Patent outcomesUS 8,977,571 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,977,571
• Inductev Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Dec 20, 2022 · IPR2021-01166 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–23 are unpatentable: claims 1, 5–8, 15, and 19–22 are anticipated by O’Brien, and claims 1–23 are obvious over O’Brien and Haaster.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSA”) “at the relevant time (around 2008) would have had at least a bachelor’s 5 Ex. 1024 was served, but not filed in this proceeding. Opp. Mot. to Exclude v. degree in electrical engineering (or equivalent) and at least two years’ industry experience, or equivalent research”; “[a]lternatively, a POSA could substitute directly relevant additional education for experience, e.g., an advanced degree relating to electrical engineering (or equivalent), with at least one year of industry experience.” Pet. 8 (citing Allen Decl. ¶¶ 31–34). Patent Owner does not dispute the level of ordinary skill in the art. See generally PO Resp. We adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the specification of the ’935 patent and asserted prior art of record.” slip op. at 10

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

    “Petitioner asserts that “prior art relied on in this Petition discloses the subject matter of the challenged claims under any reasonable construction, including their plain meaning” and “submits that no terms need to be construed to find the asserted claims unpatentable under the grounds set forth herein.” Pet. 9. Patent Owner does not submit any claim construction for any term. See generally PO Resp. We do not discern a dispute between the parties regarding any claim limitations, nor do we discern the need to expressly construe any claim limitations to resolve the controversy before us. See, e.g., 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

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

    “Frequency Power Transmission System for Wireless Systems and Devices.” Ex. 1007, Title. Petitioner asserts that O’Brien “was publicly available more than one year prior to the ’935 patent’s filing date” as “O’Brien was completed and approved by faculty members at the University of Dresden on March 11, 2006” and the “‘Machine-Readable Cataloging’ (MARC) record for O’Brien demonstrates that O’Brien was received, cataloged, and indexed by the Verbundzentrale Des Gemeinsamen Bibliotheksverbundes as of March 2, 2007.” Pet. 10–11 (citing Ex. 1005 ¶¶ 38, 40–43). Patent Owner does not challenge Petitioner’s assertions regarding O’Brien’s public accessibility. See generally PO Resp.6 Because Petitioner has shown, by a preponderance of the evidence, public accessibility of O’Brien through the MARC record and the library indexing as of March 2, 2007, as discussed above, and there is no evidence to the contrary, we find that O’Brien was publicly available more than one year prior to the filing date of the 6 We note here, however, Patent Owner’s contention that Petitioner has not properly authenticated O’Brien. Mot. Exclude 1. We address the issue of authentication below in connection with our denial of Patent Owner’s Motion to Exclude. See Section IV. ’935 patent (December 28, 2009), and thus qualifies as prior art under 35 U.S.C. § 102(b).” slip op. at 12

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

    “As stated in our Decision on Institution, although we agree with Patent Owner’s explanation of how O’Brien describes source coils and tuning circuits in discrete chapters of the reference, the Petition explains sufficiently that the Tuneable Resonant Circuit is inexorably linked to the source coils and that the circuits are thus tuned to resonance. Dec. on Inst. 20. The arguments presented by Patent Owner do not persuade us otherwise. See Sur-reply 3−4 (arguing that O’Brien’s disclosure of tuning circuits is distinct from its disclosure of coils and, therefore, Petitioner’s discussion of one does not imply the other). As explained above, despite the Petition’s prominent reliance on the source-side Tuneable Resonant Circuit, highlighted in purple in Figure 5-1, Petitioner also relies on the discussions in Chapter 6 that describe the characteristics of the tuning circuits and Chapter 7 that describe source coils and the resonant circuits as “Source side systems.” Pet. 18−20. Accordingly, and as previously noticed in our Decision on Institution, the Petition gives sufficient notice that O’Brien’s source coils are part of the “source resonator.” Dec. on Inst. 20. Therefore, we are not persuaded by Patent Owner’s arguments that the Petition fails to show that O’Brien discloses the claimed “source resonator.” For the same reason, we are not persuaded that Petitioner’s Reply represents a new theory as compared with the position taken in the Petition. Consequently, Petitioner has shown that the “source resonator optionally coupled to an energy source” of claim 1 is taught by O’Brien’s source side system where the tunable resonant circuit (including the source coils) is coupled to the power source. Pet. 18−20; Ex. 1007, Figs. 5−1 (depicting the coupling to the power source), 6−1 (depicting the source side power conversion part of the system with tuning circuits in three different axes in an omni-directional system); 112−112 (Chapter 6 – describing the power converter of the source side and stating that the “power rating of the source side converter is primarily determined by the losses in the source coils for operation at resonance”); 114−115 (Chapter 6 – describing resonant circuit parameters where the source and receiver sides are tuned to a resonant frequency and form a transformer); 139−140 (Chapter 7 – describing “Source side systems,” the source coils operating characteristics, and three resonators connected to three independent power supplies); Allen Decl. ¶¶ 76−78.” slip op. at 23

  Patent outcomesUS 8,304,935 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,304,935

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.