• Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentable
  PTAB · Jan 6, 2026 · IPR2024-01090 · APJ Miriam L Quinn · IPR · Final written decision

  The Board found claims 1–3, 21, 29–31, 42–44, 54, and 62–65 not proven unpatentable because the asserted combination did not teach the third conditional limitation.

  RulingsFinal written decision

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

    “We agree with Patent Owner’s position that the language of the claim requires the fulfillment of all the listed conditions (for each “when” clause) to cause the performance of the recited function. As stated above, the natural reading of the conditions is that they are prerequisites; they must be satisfied for the program to perform the recited function(s). For the third scenario, for example, the condition that the first web page is displayed must be satisfied in order for there to be a hyperlink to a second web page, such that the program can detect whether the location of the first contact point corresponds to that hyperlink. Ex. 1001, 102:60−62, 103:32−33, 103:37−39. The duration of the first contact has exceeded the second duration threshold without ending that first contact, and with no movement of the first contact point. Ex. 1001, 102:66−67, 103:1−3, 103:33−36, 103:39−42.13 These conditions collectively set the characteristics of the gesture that endures for the required amount of time. “When” this particular gesture is detected, for 13 We note that other non-challenged claims, require determining that there is movement of the first contact and performing corresponding functions of displaying the movement. See, e.g., Ex. 1001, 108:9−24 (Claim 40, which depends from claim 1). the required duration, and recognizing the hyperlink is selected on the displayed first web page, then the three functions corresponding to these conditions in the third scenario are performed. This “when-then” relationship is conditional, as the parties seem to agree; but, we find, it is also causal. Because the cause of outputting the feedback with the actuator, displaying a menu, and further displaying a portion of the second web page to which the hyperlink pointed is that all the conditions were satisfied as required by the claim. Ex. 1001, 103:43−55. This is the plain and straightforward reading of the “when” clauses in claim 1.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “Thus, Petitioner’s mapping as described above does not meet the requirements of the third “when” clause. We find that neither the snippet of Blumenberg nor the preview of Bhumkar is displayed in Petitioner’s proffered combination when the conditions of the third “when” clause are met. The condition of determining that the duration exceeds the “activation threshold” has no relationship to whether the display of the snippet or the preview occur. Blumenberg displays the link preview or snippet upon exceeding the 0.2 seconds or “selection threshold.” Ex. 1004 ¶ 49. Thus, there is no conditional relationship, much less a causal relationship between the display of the link preview or snippet and the “activation threshold” to which Petitioner has mapped the condition of the third “when” clause. The substitution of the snippet with Bhumkar’s “quick view” under Petitioner’s “simple substitution” rationale does not remedy the deficiency noted here. The function of “further display at least a portion of the second web page” (i.e., the “quick view”) is causally related to the “selection threshold,” and has no correlation to the duration determination, that the “activation threshold” has been exceeded. See Tr. 9:8−20 (Petitioner’s counsel arguing that “[t]here’s got to be correlation between them.”). Indeed, without a show of causality, the recited “further display” limitation is rendered irrelevant, in the Blumenberg-Bhumkar-Griffin combination. There is no need to “further display” because it already has been displayed, untethered to any condition recited in the third “when” clause.” slip op. at 41

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time of the alleged invention would have had a “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.” Pet. 6 (citing Ex. 1003 ¶¶ 36–37). In the Decision on Institution, the Board adopted the uncontested language quoted above in Petitioner’s assessment of the level of ordinary skill. The Board however did not adopt additional statements proffered by Petitioner regarding the “extensive background knowledge and understanding” allegedly possessed by a person of ordinary skill in the art (Pet. 6–7). Dec. on Inst. 9−10. Patent Owner agrees with the level of ordinary skill in the art adopted by the Board for purposes of the Decision on Institution. PO Resp. 12; see also Ex. 2008 ¶¶ 58−59. The specification of the ’581 patent describes an electronic device that allows for manipulation of user interface objects and, more specifically, the display of web pages through a user interface of a network browser application, according to contact with a touch-sensitive interaction surface. Ex. 1001, (54), Abstr. Consistent with the scope of the ’581 patent and the lack of dispute on the issue, we find that the level of skill in the art is reflected in a person having 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.” slip op. at 6

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We agree with Dr. Cockburn that the claims are not themselves programming code or even pseudo code. But they recite the functionality that the program instructions implement.15 We do not find useful Dr. Cockburn’s quibble with the word “instructions” recited in the claim as being too generic to import the understanding in the relevant art that programming logic is involved. Id. ¶ 55. Claim 1 recites more than mere “instructions.” As discussed above in Section II.E.1, the claim requires “one or more programs” and those “programs including instructions.” Ex. 1001, 102:56−59. We are persuaded by Dr. Mahon’s explanation concerning the perspective of a person of ordinary skill in the art and the implementation of instructions in programming logic that is executed by a processor, and that 15 Claim 42 is a method claim and does not recite the “program including instructions to” as claim 1 does. However, claim 42 does recite the processor and memory in parallel with the same functions recited in claim 1, and Petitioner has not argued that the scope of claims 1 and 42 differ in any material way. Ex. 1058 ¶ 55, n.3. Ex. 2008 ¶ 51. “from a software engineering standpoint, it would not be possible to implement a function that performs an action ‘when’ preconditions are met unless that function is designed to be executed because those preconditions have been detected.” Mahon Decl. ¶ 52. We credit Dr. Mahon’s explanations as they are reasoned and supported by the specification of the ’581 patent. Mahon Decl. ¶ 50. We are not persuaded by Dr. Cockburn’s rebuttal of Dr. Mahon’s reliance on the specification as supporting the understanding of a person of ordinary skill in the art because it dismisses the discussions of logic to implement the gesture detection and corresponding operations merely because these passages do not refer specifically to the three scenarios of the claim. Dr. Mahon’s discussion of general programming principles of conditional statements provides context relevant to the field of the invention. See Phillips, 415 F.3d at 1319 (“extrinsic evidence can help educate the court regarding the field of the invention and can help the court determine what a person of ordinary skill in the art would understand claim terms to mean” but warning about the flaws inherent in this type of extrinsic evidence). Accordingly, we are persuaded that Dr. Mahon’s testimony confirms the understanding of the plain and natural reading of the claim language to require a causal relationship between the conditions and the functions.” slip op. at 31

  Patent outcomesUS 10,725,581 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,725,581
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdNo claims unpatentable
  PTAB · Oct 31, 2025 · IPR2024-00777 · APJ Jameson Lee · IPR · Final written decision

  Claims 16–27 were not shown unpatentable because Petitioner failed to account for limitations 16[b] and 16[i] and their counterparts across the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes that a person of ordinary skill in the art “would have a Bachelor of Science degree in Electrical Engineering, Computer Engineering, Computer Science, Human Computer Interaction, or a related technical field, with at least one year of experience working in the field of user interfaces and/or content management.” PO Resp. 11 (citing Ex. 2040 ¶ 53). The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 10. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s (EX2040. ¶53) does not change the arguments set forth herein.” PO Resp. 11. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.4 4 All of our findings and conclusions would still be the same, however, had we applied Patent Owner’s articulation of the level of ordinary skill in the art.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for patent owner

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

  • BurdenNot shown unpatentable

    “PO Resp. 30–31 (Figure 26 omitted). In its Reply, Petitioner still does not provide an articulated reason for placing user profile selection buttons, labeled with user names, within Horn’s panes 2601 or 2602. Reply 12–14. Although Horn does describe personalized profile, Petitioner points to no disclosure of Horn as to how a user would have selected his or her own profile from among a plurality of user profiles. Petitioner presents no reason for placing these user profile selection buttons, labeled with user names, gleaned from or suggested by Baumgartner, within either pane 2601 or pane 2602 in Horn’s workspace view. Further, pane 2602 contains “a list of all collections defined by MFS and the user,” and pane 2601 lists the source examined by the user to create his or her collections. Ex. 1005, 19:41–46. That disclosure suggests the contents of panes 2601 and 2602 are tied to one particular user. No rational basis is articulated by Petitioner to place user profile selection buttons within these panes which appear to be in the profile space of one user. For the foregoing reasons, Petitioner has not adequately accounted for limitation 16[b].” slip op. at 22

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

    “The test for sufficiency of a written description under 35 U.S.C. § 112 is whether the earlier application’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Id. The Court of Appeals for the Federal Circuit has explained: One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. (“[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”) (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims. . . .”), the specification must contain an equivalent description of the claimed subject matter. A description which renders obvious the invention for which an earlier filing date is sought is not sufficient. Lockwood v. American Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997).” slip op. at 31

  Patent outcomesUS 11,017,815 not shown unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00538 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held all challenged claims of the ’933 and ’054 patents not unpatentable because the claims were entitled to the December 22, 2009 priority date, making the asserted prior art unavailable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time of the invention as someone that would have had “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three years of experience working with wirelessly connected mobile devices that used common wireless communications protocols such as Bluetooth and 802.11.” 537 Pet. 17 (citing Ex. 1203 ¶¶ 29–32). Petitioner also contends that this description “would not differ materially between December 2008 and June 2013,” the earliest possible priority date for the patents-at-issue and the priority date alleged by Petitioner, respectively. Petitioner further contends that more education “would compensate for less work experience and vice versa.” Id. Petitioner. 537 PO Resp. 6−7; 538 PO Resp. 6−7. Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. We adopt Petitioner’s level of ordinary skill in the art particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 16

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

    “Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” 537 Pet. 17–18; 538 Pet. 18−19. Patent Owner does not contend that any terms require construction. 537 PO Resp. 6; 538 PO Resp. 6. We have not identified any terms that require construction for us to decide the threshold issue of priority. And given that the parties have no disputed terms, no claim terms are hereby construed.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The written description requirement is satisfied when “the missing descriptive matter” is necessarily present in the original “application’s specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Thus, it is sufficient to show that the written description actually or inherently discloses the claim element. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118−20 (Fed. Cir. 2001). We also note that Patent Owner argues that the field of the 948 application is a predictable application of wireless communications, which, compared to other complex and unpredictable technologies, would require a lower level of detail to satisfy the requirement. See Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018); see also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“the level of detail required . . . varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”); 537 PO Resp. 26−27; 537 Edwards Decl. ¶¶ 82, 87; 537 Surreply 8.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “1277 (Fed. Cir. 2011); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). At issue in the instant proceedings is the first requirement, whether the written description of the 948 application is sufficient, because Petitioner contends that the claims of the ’933 and ’054 patent are not entitled to claim priority to ancestry applications under 35 U.S.C. § 120. 537 Pet. 18.43 We disagree with Petitioner because we find that the claims are supported by the written description of the 948 application disclosure.” slip op. at 18

  Patent outcomesUS 9,173,054 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,173,054
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00537 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held all challenged claims of the ’933 and ’054 patents not unpatentable because the claims are entitled to priority to December 22, 2009, making Forutanpour not prior art.

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “VI. ANALYSIS OF UNPATENTABILITY Because of our determination that the priority date of December 22, 2009 is appropriate, we conclude that the Forutanpour reference (a U.S. patent application published on April 7, 2011) is not prior art. presented in either Petition. VII. CONCLUSION Having reviewed the argument and supporting evidence of record, and after a full and fair hearing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that any of the challenged claims of the ’933 and ’054 patents are unpatentable.” slip op. at 36

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Thus, we find that the 948 application reasonably conveys to a person of ordinary skill in the art that the inventors contemplated the communication of wireless devices to continue using the known method of file/data transfers via Wi-Fi and that the technique for device discovery using Bluetooth would additionally provide environment information useful for assessing which nearby device has the TapApp functionality. Disclosure of the knowledge of wireless radio dialogue between devices to collect further information to provide a particular location of a device informs a person of ordinary skill in the art that the 948 application was not limited to using only Bluetooth for the method performed by the WTRU, culminating in data transfer.” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “sufficiency of the written description, we conclude that the 948 application sufficiently describes Wi-Fi transfer for data transmissions in WTRUs even if the method also uses Bluetooth for selecting target WTRUs. Accordingly, the claims of the ’933 and ’054 patents are entitled to the priority date of December 22, 2009, the date of the 948 application. VI. ANALYSIS OF UNPATENTABILITY Because of our determination that the priority date of December 22, 2009 is appropriate, we conclude that the Forutanpour reference (a U.S. patent application published on April 7, 2011) is not prior art.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F. Level of Ordinary Skill in the Art Petitioner identifies a person of ordinary skill in the art (“POSITA”) at the time of the invention as someone that would have had “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three years of experience working with wirelessly connected mobile devices that used common wireless communications protocols such as Bluetooth and 802.11.” 537 Pet. 17 (citing Ex. 1203 ¶¶ 29–32). Petitioner also contends that this description “would not differ materially between December 2008 and June 2013,” the earliest possible priority date for the patents-at-issue and the priority date alleged by Petitioner, respectively. Petitioner further contends that more education “would compensate for less work experience and vice versa.” Id. Petitioner. 537 PO Resp. 6−7; 538 PO Resp. 6−7. Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. We adopt Petitioner’s level of ordinary skill in the art particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 16

  Patent outcomesUS 8,737,933 not shown unpatentable
  § 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 8,737,933
• Mianyang Boe Optoelectronics Technology Co., Ltd. / Wuhan China Star Optoelectronics Semiconductor Display Technology Co., Ltd. et al. v. Samsung Display Co., Ltd.No claims unpatentable
  PTAB · Jan 6, 2025 · IPR2023-01075 · APJ Terrence W Mcmillin · IPR · Final written decision

  Petitioner failed to show claims 1–6, 10, 12, 17–19, 21–23, 40–47, 51, and 52 unpatentable because the cited art did not teach or suggest a pixel defining layer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we again adopt Petitioner’s definition of the level of ordinary skill in the art. It is supported by the testimony of Dr. Pattison, and appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). We find Patent Owner’s articulation of the level of ordinary skill to be imprecise, because Patent Owner does not specify the amount of experience possessed by an ordinarily skilled artisan. The unbounded reference to “experience” is vague and overly broad, as it could mean 1 year of experience or over 30 years of experience, for example. In addition, the ’578 patent is directed to “a pixel arrangement structure of an (OLED) [organic light emitting diode] display” (Ex. 1001, 1:22–23), whereas Patent Owner’s proposed experience is tied to “active-matrix displays.” PO Resp. 5. Given that the field of OLED displays includes both passive and active matrix designs (see generally Ex. 2009 ¶¶ 40–56), we see no reason to restrict the relevant experience to active matrix displays. For these reasons, we do not adopt Patent Owner’s definition of the level of ordinary skill in the art.” slip op. at 19

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

    “Petitioner has failed to show that the cited art teaches or suggests a “pixel defining layer” as recited. Neither party in this proceeding or in the ITC Investigation argued that “pixel defining layer” as recited in the challenged claims required construction, and neither party presented any arguments regarding the construction or meaning of this term.6 Pet. 13; PO Resp. 4–5. 5 37 C.F.R. § 42.104(b)(3) requires that a petition contain a statement identifying how a challenged claim is to be construed. 6 In our Decision instituting trial, we stated that “[i]f either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during We give the term “pixel defining layer” as recited its plain and ordinary meaning. For purposes of this decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. Petitioner Has Not Shown That the Cited Art Teaches or Suggests All the” slip op. at 21

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24

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

    “require for the same reasons set forth above.”). And, in discussing motivation to combine the teachings of Matthies and Yamada, Petitioner articulates no reasoning to support modifying Matthies’ structure based on Yamada to yield a “pixel defining layer.” See Pet. 69–75. Patent Owner argues that “[t]he Petition failed to identify any teaching or suggestion in Matthies of a pixel defining layer, because there is none.” PO Resp. 31 (citing Ex. 2009 ¶ 187); see also PO Sur-reply 15–17. Petitioner contends that “[a] POSITA would have understood that Matthies employs (or at least could obviously employ) the claimed ‘pixel defining layer.’” Pet. 23. An allegation that a skilled artisan would have understood that the prior art “could obviously” be modified to include an element of the claimed invention does not establish that the prior art teaches or suggests such recited element. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 24

  Patent outcomesUS 11,594,578 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,594,578
• Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCNo claims unpatentable
  PTAB · Nov 7, 2023 · IPR2022-00981 · APJ Jameson Lee · IPR · Final written decision

  The Board held claims 1, 8–11, 13, 15, 17, and 19 not unpatentable because neither asserted obviousness ground accounted for the required dynamic configuration without user intervention.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. For reasons discussed below, we are unpersuaded that Dr. Cooklev’s declaration should be accorded little to no weight. First, Petitioner asserts: “Dr. Cooklev’s declaration merely repeats the same arguments of Patent Owner’s Preliminary Response. Indeed, Dr. Cooklev even testified in deposition: ‘ultimately counsel formulated my opinions.’” Reply 13 (quoting Ex. 1065, 14:1–3). We are not persuaded that the testimony of Dr. Cooklev does not reflect the opinion of Dr. Cooklev such that it constitutes mere attorney argument. With respect to the above-noted testimony, Dr. Cooklev explained: THE WITNESS: Well, maybe I misspoke. To begin with, these are my opinions. And I also testified, I believe, that I had communicated my opinions to counsel. Ultimately, counsel helped format those opinions, I mean put them in a format that is appropriate. So maybe that is the – that’s how I would clarify my – the answer that I gave earlier in the morning. Ex. 1065, 96:5–14. Dr. Cooklev further explained: “These opinions do not come from counsel. They come from me.” Id. at 96:20–21.” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[a] Person of Ordinary Skill in The Art (“POSITA”) in December of 1996 would have a bachelor’s degree in electrical engineering, or equivalent training, and approximately two years of experience working in the field of networking and wireless devices. Lack of work experience can be remedied by additional education, and vice versa. Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner

    “As Patent Owner has noted (PO Resp. 16), the Specification of the ’936 patent repeatedly and consistently states that the mobile device is able to “switch itself” or “switches itself.” Ex. 1001, 5:1–4, 8:9–12, 8:36–39. The Specification of the ’936 patent also describes that the device “can decide the preferred mode to be in.” Id. at 4:8–9 (emphasis added). The Specification of the ’936 patent further states that the device “is dynamically software reconfigurable for the various environments.” Id. at 2:35–36 (emphasis added). In contrast, there is not any description, none, in the Specification of the ’936 patent of the user of the device issuing a command to the device at the time of making a functional switch to cause the device to switch function.11 In light of such disclosures, we agree with Patent Owner that a fundamental aspect of the invention of the ’936 patent is that dynamic configuration occurs without user intervention, i.e., without user command at the time of the change in configuration. PO Resp. 13. In our view, it is not consistent with the Specification of the ’936 patent to read “dynamically configurable” as encompassing manual reconfiguration by user intervention, i.e., user command at the time of reconfiguring. Reading “dynamically configurable” as encompassing manual reconfiguration by user intervention, i.e., user command at the time of reconfiguring, is also contrary to the prosecution history of the ’936 patent.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We have construed “dynamically configurable” as “configurable when and as needed and in real time, without the need for user intervention,” and explained that “without the need for user intervention” means absent user command at the time of dynamic configuring. See Section II.C.2., supra. Based on that construction, we are not persuaded by Petitioner that Regnier dynamically configures its device from a first function to a second function, as Petitioner asserts. As explained by Petitioner, Regnier’s device reconfigures its functionality in response to user selection of the desired application program, to provide the functionality corresponding to the user selected application program. Pet. 51–52. Patent Owner notes that Petitioner’s rationale “relies on manual, user- initiated conversions.” PO Resp. 36. Patent Owner explains: Petitioners argue that Rautiola in view of Regnier “describes that the client device dynamically converts between functions by downloading a client portion of an application and converting between different application services that are allowed by a server on a dynamic basis and chosen dynamically by a user.” Pet. 48. These allegations combine two distinct parts: (1) providing a client portion of an application for download; and (2) determining whether to allow the client device to use a different application service each time the client requests converting from a first to second application. Ex. 2031, ¶74. According to Petitioners’ own arguments, both parts depend on manual user requests. For providing a client portion, the Petition states that “Regnier teaches that “client portion 291” 130 upon a request from the user.” Pet. 49 (quoting Ex. 1006, 5:52-5:54) (emphasis added). The Petition also repeatedly acknowledges that a user request initiates Regnier’s process to determine whether to allow a client device to use an application. Id., 49 (alleging that Regnier’s server maintains user profiles that determines whether users can execute applications), id., 51-52 (alleging that “Regnier further explains that each time a user selects an application . . . ”); id., 53 (alleging the server’s resource manager allows “users to choose dynamically among shared resources”). PO Resp. 36–37. Patent Owner further notes that Petitioner also cites to passages from Regnier that describe updating menu items in a spreadsheet for use by an application. Id. at 37 (citing Pet. 51). In that regard, Patent Owner explains:” slip op. at 33

  Patent outcomesUS 8,472,936 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,472,936
• Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00164 · APJ Jason M Repko · IPR · Final written decision

  LinkedIn did not prove claims 1–3 and 6–10 unpatentable on any asserted Eaton- or Kim-based anticipation or obviousness ground.

  RulingsFinal written decision

  • ExcludeOther

    “In its Motion to Exclude, Patent Owner seeks to exclude Petitioner’s Exhibits 1017–1020, 1022–1026, 1030, 1032, 1033, 1034, and 1036. Mot. 1. Even without excluding any of these exhibits, Petitioner has not proven that any challenged claims are unpatentable. Thus, we dismiss Patent Owner’s Substitute Motion to Exclude as moot.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s alternative definition that “a PHOSITA[3] would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. Patent Owner does not propose an alternative definition. See generally PO Resp.; Sur-reply. Thus, in this decision, we apply Petitioner’s proposed definition, without the alternative qualifier about “equivalent additional formal education . . . or work experience.” See Pet. 6. We determine that Petitioner’s definition is supported by the testimony of Dean Willis. Ex. 1004 ¶¶ 32–35.” slip op. at 6

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

    “B. Claim Construction We need only construe terms that are in controversy and only to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We need not construe any terms to resolve the issues in this case.” slip op. at 6

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We credit Dr. Rajeev Surati’s testimony6 (Ex. 2020 ¶ 2053) on this issue over Dean Willis’s testimony (Ex. 1004 ¶¶ 211–13) because Dr. Rajeev Surati’s testimony is more consistent with Kim’s disclosure and Dean Willis’s Declaration lacks an adequate explanation. Thus, Petitioner has not shown that Kim discloses the associating step.” slip op. at 16

  Patent outcomesUS 8,230,135 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,230,135
• Linkedin Corporation v. Ebuddy Technologies B.V.No claims unpatentable
  PTAB · Jun 30, 2023 · IPR2022-00165 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–3 and 6–10 were not shown unpatentable because Eaton and Kim each failed to disclose the claimed array and alternative-title limitations, and the obviousness grounds did not cure those deficiencies.

  RulingsFinal written decision

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

    “alternative” or “alternative title.” Neither party contends that “alternative” or “alternative title” is a term of art with an art recognized meaning. In plain English, “alternative” as an adjective designates something that is another option, another choice. Dictionary.com (accessed June 23, 2022), https://www.dictionary.com/browse/alternative (Ex. 3002) (“affording a choice of two or more things, propositions, or courses of action,” “(of two things, propositions, or courses) mutually exclusive so that if one is chosen the other must be rejected: The alternative possibilities are neutrality and war.”). The specification of the ’179 patent also consistently uses the word “alternative” to mean something in lieu of or in place of another choice. For instance, the ’179 patent describes: Advantageously, data associated with the event can also (or in the alternative) be provided to the title provisioning engine 616. Ex. 1001, 8:15–17 (distinguishing “also” from “alternative”). A given event may cause the title provisioning engine 616 to rewrite the entire title array 618 with title strings associated with the most recent events. Alternatively, a given event may cause the title provisioning engine 616 to append title strings to the end of the title array 618. Id. at 8:24–28 (using “alternative” in mutually exclusive context). slip op. at 12

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

    “During oral hearing, counsel for Petitioner clarified that the index to an array may start from “0” rather than “1” and that the index also need not be a number. Tr. 18:13–19:19. With that clarification, counsel for Patent Owner indicated that there no longer is any dispute with regard to the meaning of “array.” Tr. 61:14–25. Accordingly, we have no need to construe the term “array.” 4. “event” The term “event” is recited in independent claim 1. The specification” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “reproduced above, are “event messages / strings 300 (shaded in green).” Pet. 30 (citing Ex. 1006 ¶ 31). But the cited evidence does not support that assertion. Paragraph 31 of Eaton describes the referenced column simply as “associated event 300.” Ex. 1006 ¶ 31. Further, even if the column stores associated event messages, Petitioner cites nothing to show that the associated messages in server memory column 300 are the event presence notification messages discussed above in the context of limitation 1[ii]. Alternatively, Petitioner relies on Eaton’s Figure 6 embodiment. Pet. 31. Petitioner asserts (id.) that in the Figure 6 embodiment server memory 160 stores an array of event notifications, referencing an annotated version of Eaton’s Figure 6, reproduced below: Figure 6 is a block diagram of an alternate embodiment of a server memory for use within a server of the instant message communication system, and Petitioner has shaded the EVENT AN–NN column green and the words “SERVER MEMORY” red. Ex. 1006 ¶ 19. Petitioner asserts that both the TOPIC N column 540 and the EVENT AN-NN column 670 as the stored event notifications. Pet. 31 (citing Ex. 1006 ¶¶ 56–58). But the assertion is not supported by the cited evidence. Paragraphs 56–58 of Eaton do not indicate that either topic entries 540 or event entries 670 are the event presence notification messages discussed above in the context of limitation 1[ii]. In its Reply, Petitioner asserts that event presence notification message EPNM “is associated with the character strings labelled Topics [1]- [N], and using ‘Topic N’ as the example, it is tied to ‘Event[s] AN-NN’ (representing the ‘events’ from the plurality of events 180 discussed in Claim 1[i]).” Reply 22. Even assuming that there is an association, Petitioner still has not shown that EPNM is any of Topics [1]-[N] in Figure 6. Similarly, Petitioner has not shown that EPNM is any of Event [1]-[N] in Figure 2.” slip op. at 26

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “’179 Patent as provided above in Ground 1. To the extent that there are arguably any meaningful differences between those claims and Eaton’s disclosures, those differences would have been trivial and obvious modifications to make for a PHOSITA.” Pet. 49. This conclusory assertion of obviousness does not specifically identify any difference between the claimed invention and Eaton, and does not provide any reasoning or rational underpinning to support the assertion. Conclusory assertions of obviousness are insufficient to satisfy Petitioner’s burden of proof. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Petitioner asserts that to the extent that Eaton discloses various, “distinct” embodiments, it would have been obvious to one with ordinary skill in the art to combine Eaton’s teachings into a single system. Pet. 49. Petitioner also asserts that one with ordinary skill in the art “would understand that Eaton discloses possible configurations and/or operations of the same system, and to the extent that it is argued or found otherwise, the functions would have been entirely obvious to combine for [one of ordinary skill in the art] given Eaton’s express disclosures.” Id. It is uncertain what distinct embodiments are referred to by Petitioner. However, even assuming that the disclosures of Eaton’s embodiments, already discussed by Petitioner, are properly combinable, there still remains the deficiencies, discussed above in the alleged anticipation of claim 1 by Eaton, relating to the step of storing the event notification in an array, the step of providing the event notification from the array to a process executed by a processor, and the step of providing an alternative title from the array to the process. Accord Inst. Dec. 57.” slip op. at 33

  Patent outcomesUS 8,402,179 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,402,179
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 2, 2023 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 18, 26, 27, 29, and 31 were not shown unpatentable because Ogasawara did not disclose claim 18’s determining limitation, and the obviousness grounds did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103. Because the ’252 patent was filed before the effective date of the relevant amendment, the pre-AIA versions of §§ 102, 103 apply. working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. PO Resp. 15. We adopt Petitioner’s description, which is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 5

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

    “C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in federal district court in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b) (2020). Patent Owner proposes construing the term “the image” in all challenged claims to refer to “the same, single image.” PO Resp. 20. Based on this proposed construction, Patent Owner argues that the combination of Ogasawara and Bolle does not teach the limitations of claim 31. Id. at 59–60. As discussed below, for reasons unrelated to the term “the image,” Petitioner does not meet its burden to show that the challenged claims are unpatentable. See Sections II.D–II.F. Therefore, we determine that the term “the image” does not require an express construction to resolve the parties’ disputes regarding the asserted grounds of unpatentability.” slip op. at 6

  • BurdenNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner does not show persuasively that Ogasawara expressly or implicitly discloses the determining limitation of claim 18. The portions of Ogasawara cited by Petitioner indicate that Ogasawara’s computing platform invokes its recognition software to analyze image data without first determining if the image contains a recognizable symbol. See Pet. 23–25 (citing Ex. 1005, 18:11–58, 20:41–67, 21:15–20). Ogasawara discloses that the user of its device verifies that an image contains an entire symbol when capturing the image and before transmitting the image data to the computing platform. Ex. 1005, 20:47–51 (“While the consumer is scanning a particular bar code with the digital camera, . . . the consumer can visually verify that the entire image has been captured.”); see also id. at 20:41–47, 22:10–13, 22:59–63 (disclosing that a user captures an image of an item’s bar code by placing it within the image field of the digital camera). As a result, when Ogasawara’s computing platform receives the image data, it simply invokes recognition software to analyze the image data.2 Id. at 18:32–37, 21:17–20. For example, Ogasawara discloses that “[o]nce the bar code image has been captured, the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software.” Id. at 21:17–20; see also id. at 18:32–37 (“Once this information is received . . . , a character 2 In fact, Petitioner appears to acknowledge that Ogasawara’s device operates in this manner. Pet. 24–25 (“[o]nce the bar code image has been captured, the program decodes the bar code image data . . . with pattern recognition software.”). recognition and/or pattern recognition application routine can be invoked . . . to . . . decode the bar code.”). Thus, Ogasawara supports Patent Owner’s position that Ogasawara’s computing platform does not determine if an image contains a recognizable symbol before analyzing the image. Petitioner argues that the term “recognize” in Ogasawara discloses determining if an image contains a recognizable symbol, whereas the term “decode” discloses analyzing the symbol to extract information. Pet. Reply 6 (“capture, recognize and decode captured images.”). We disagree. Ogasawara uses both terms—recognize and decode—to describe analyzing image data to extract information. Ex. 1005, 18:32–37, 21:17–20. For example, Ogasawara discloses that its computing platform invokes recognition software “to either decode the bar code videographic data or to perform pattern recognition functions on a[n] icon-like patter[n].” Id. at 18:32–37 (emphases added); see also id. at 21:17–20 (“the program decodes the bar code image data . . . by operating on the bar code image with pattern recognition software”) (emphases added). Thus, Petitioner’s reliance on the term “recognize” does not show that Ogasawara discloses the determining limitation of claim 18. For the reasons discussed above, Petitioner does not show sufficiently” slip op. at 11

  Patent outcomesUS 7,899,252 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,899,252
• Bank Of America, N.A. v. Nant Holdings IP, LLCNo claims unpatentable
  PTAB · Feb 1, 2023 · IPR2021-01304 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1, 10, 12, 13, and 15 were not shown unpatentable because Petitioner failed to prove a rational reason to combine Ogasawara and Bolle or a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDenied

    “We credit Dr. Bajaj’s (Patent Owner’s expert) testimony that Bolle requires a stationary camera and spatially registered images for purposes of segmentation via Bolle’s Figure 3a and 3b embodiments, which we find to be well-aligned with Bolle’s disclosure and the complete record before us. See, e.g., Ex. 2007 ¶ 33. We find Dr. Bajaj’s testimony on this issue much more credible than Dr. Rodriguez’s (Petitioner’s expert) testimony to the contrary, which we find to be misaligned at best with Bolle’s explicit disclosures discussed above. See, e.g., Ex. 1050 ¶ 51 (Dr. Rodriguez testifying that Bolle’s Figure 4 shows a stationary camera, but Bolle allegedly is not limited to using a stationary camera; and that Bolle’s segmentation techniques do not require “exact alignment,” merely “approximate[]” alignment of images, without explaining how or why the skilled artisan would have interpreted Bolle in that way); Ex. 2008, 97:22– 99:6 (testifying on re-direct to the same); see also Skky, Inc. v. MindGeek, S.A.R.L., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 42

  • Skill levelSkill level petitioner adoptedOther

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’036 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Rodriguez (Ex. 1003 ¶¶ 46–47).” slip op. at 12

  • Prior constructionPrior construction adoptedDecided for patent owner

    “in the District Court Case entered a Markman order construing the Recognizes Limitation, among others. See Ex. 2006, 16–18, 21–22.4 Specifically, the court construed the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” Ex. 2006, 21–22 (emphasis added). As explained in our Institution Decision (Dec. 17–19), we have reviewed the district court’s reasoning, as well as the ’036 patent and other evidence of record before us, and agree that for reasons given by the district court, the Recognizes Limitation should be given the same construction as determined by the district court. Neither 4 Unless otherwise specified, citations to exhibits use the page numbers assigned by the parties, not the original page numbers. party since has urged (or persuaded) us to revise this construction. Based on the complete record before us, we continue to construe the Recognizes Limitation to mean “recognizes the target as a known target from the target database based on comparing parameters derived from the digital representation to recognition parameters associated with the known targets to find a match.” See Dec. 17–19; Ex. 2006, 21–22. Both parties adopt this construction for purposes of their post-institution arguments in this case. See PO Resp. 18–19 (“Patent Owner and its expert apply this claim construction in their analysis in the remainder of this IPR, but do not necessarily agree it is correct.”); see generally Pet. Reply (arguing “matching” as per this construction); Pet. (same).” slip op. at 14

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

    “modifier. The definite article “the” can be used to modify something plural, e.g., “the digital representations.” Although in claim 1, “the” is used to modify a “digital representation,” that does not help the Patent Owner, because nothing in the claim excludes the involvement of additional digital representations while one “digital representation” is analyzed. Patent Owner points to nothing in claim 1 which restricts the analyzing to “only” one digital representation or “no more” than one digital representation, and we see none. Further, claim 1 uses the non-limiting phrase “comprising,” which creates a presumption that the claim is not limited to only those elements expressly recited in the claim. Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). We recognize that the only embodiment described in the specification of the ’036 patent analyzes only a single digital representation, but we are not required to construe the claim as limited to just that embodiment. Innova/Pre Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111, 1121–22 (Fed. Cir. 2004). Such a construction is neither encouraged nor presumed. Id. Additionally, Patent Owner points to no expressions of disavowal either in the prosecution history or in the specification of the ’036 patent with regard to “a digital representation” in which the patent applicant disavows, with clarity, claim scope covering analysis of more than one digital representation. For the foregoing reasons, we disagree with Patent Owner, and we determine that analyzing “a digital representation” as recited in claim 1 does not preclude involvement of an additional digital representation or digital representations in the analysis.” slip op. at 17

  Patent outcomesUS 8,478,036 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,478,036

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.