- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00254 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3, 5–9, 11–13, 15–18, and 20 are unpatentable as obvious over Karppanen and over Yare.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Accordingly, we do not discount Mr. Smith-Gillespie’s testimony” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim. Petitioner asserts that in the Delaware action , the district court construed “closed loop” as “gas pathway within a display housing containing gas that is essentially isolated from external air.” Pet. 11 (citing Ex. 1026, 1). Petitioner asserts that the district court’s construction is the proper construction, in light of the specification and the prosecution history of the ’740 patent. Id. at 11–12. Petitioner explains: The ’740 patent refers to the gas/air, circulating through a closed loop as the circulating gas/air and also as the “isolated gas.” (Ex. 1001, 9:64–10:3, 10:7–9, 10:56–58, 11:30–12:6 (claims reciting circulating gas/air), 3:30–[39], 3:50–52 (specification referring to gas in the closed loop as “circulating gas” and “isolated gas”), FIG. 1.) Moreover, as noted above, the Applicant distinguished the claims from the Thielemans prior art based on the argument that the closed loop must be separate from and in addition to the open loop. (Ex. [1031], pp. 44-45, 160 (Responses filed on 01/07/2019 and 08/15/2019).) The Court’s “closed loop” construction should apply here, though Applicant notes that this claim construction does not affect the applicability of the prior art in this Petition because the art teaches the separate loops. Id. at 12. Petitioner’s characterization of the prosecution history with respect to the Thielemans reference is inaccurate. Our review of the cited portions of the prosecution history reveals that the Applicants did not argue to the Examiner that the closed loop and the open loop must be isolated from each other and cannot mix. Rather, the Applicants argued that Thielemans discloses having an open loop or a closed loop, not both an open loop and a closed loop. Ex. 1031, 44–45, 160. The Applicants also argued that Thielemans’s closed loop is not “about” and is not “encircling” the electronic image assembly. Id. at 160. The cited prosecution history does not support Petitioner’s assertion. Patent Owner explains that the ITC in the related investigation” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 34
Patent outcomesUS 10,506,740 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,506,740 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00221 · APJ Jameson Lee · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Karppanen and Larson; the Board found the evidence of obviousness outweighed the evidence of nonobviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“for outdoor displays, no one (including Samsung, despite having begun attempting to develop outdoor displays at least by 2005) was successful until Mr. Dunn and Mr. Hubbard conceived of their invention.” PO Resp. 65. Patent Owner cites no evidence for this proposition. Thus, Patent Owner’s assertions regarding Mr. Dunn’s and Mr. Hubbard’s invention satisfying the alleged need are based on unsupported attorney argument. Accordingly, “we conclude that the nexus between the claimed invention and the purported long-felt, unmet need is too attenuated to provide a persuasive rationale for nonobviousness.” In re Karpf, 758 F. App’x 960, 965 (Fed. Cir. 2019).” slip op. at 62
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableObjective indicia outweighedUnpatentable
“and against obviousness, and weighed the evidence accordingly. The evidence of obviousness outweighs the evidence of nonobviousness. Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Karppanen and Larson.” slip op. at 74
Patent outcomesUS 11,013,142 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,013,142 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentablePTAB · Apr 22, 2026 · IPR2022-01002 · APJ Jameson Lee · IPR · Remand
On remand, claims 1–9 and 12–20 are unpatentable as obvious over Paulraj and Heath under § 103.
RulingsRemand decision- RemandOther
“determining no challenged claim had been proved unpatentable by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively, “Petitioner”). Paper 41. Petitioner appealed to the U.S. Court of Appeals for the Federal Circuit. Papers 43, 44. On January 13, 2026, the Federal Circuit vacated and remanded, on the basis that the Board erred by not considering certain alternative arguments presented in the Petitioner’s Reply (Paper 29), which were properly responsive to claim construction proposed in the Patent Owner Response and adopted by the Board.1 Paper 45. In its Reply, Petitioner alternatively argued that even under the Patent Owner’s claim construction relating to “the plurality of antennas,” the same prior art references nonetheless still rendered obvious the challenged claims. In this remand proceeding, neither party requested the filing of additional briefing, despite having been given an opportunity to make and explain such a request. Paper 51. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Having considered all of the arguments presented in Petitioner’s Reply, we determine that Petitioner has proved by a preponderance of the evidence that claims 1–9 and 12–20 of U.S. Patent No. 9,191,083 B1 (Ex. 1001, “the ’083 patent”) are unpatentable. A.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 2–3 (citing Ex. 1003 ¶¶ 27–28). Petitioner additionally states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 3. Patent Owner does not in its Response address the level of ordinary skill. Patent Owner’s expert witness, Dr. Cooklev, testifies that he “will apply the same definition of the level of skill of a POSITA [as Petitioner].” Ex. 2004 ¶ 19. Based on the evidence of record, we determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience related to the design or development of wireless communication systems. This is consistent with Petitioner’s articulation of the level of ordinary skill, with the exception of Petitioner’s open-ended reference to “at least” two years of experience, because that would improperly encompass a level of experience only possessed by an expert. This articulation of the level of ordinary skill is also the same as what we determined in the Final Written decision issued on November 30, 2023. Paper 41, 6. C. slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends: “The plain meaning of the claims requires that the same ‘plurality of antennas’ be used for transmitting and receiving the plurality of signal streams.” PO Resp. 5, 9–12. Citing Dr. Cooklev’s testimony, Patent Owner contends that the ’083 patent’s Specification describes embodiments that use the same antennas for both transmitting and receiving data streams. PO Resp. 7–9 (citing Ex. 2004 ¶¶ 34–35). In the Final Written Decision, we determined: Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas— one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims. Paper 41, 13 (emphasis added). The Federal Circuit agreed with our claim construction. Apple Inc. v. Smart Mobile Technologies LLC, U.S. Ct. App. Fed. Cir., slip op. 24-1419 (January 13, 2026) (2026 WL 91021) (Paper 45, 2–4). We continue to apply the same construction here that we adopted in the Final Written Decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“legally sufficient motivation for modifying Paulraj, but only attempted to show that the modification “could” have been made by one of ordinary skill in the art which is not enough for a showing of obviousness. Sur-reply 8–9. We disagree with Patent Owner. Establishing that certain technique was well-known to one of ordinary skill in the art at the effective filing date of the challenged patent constitutes sufficient motivation to make a modification in accordance with what was well-known in the art to one of ordinary skill, absent factors not present here. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. That would be the situation where a technique was well-known to one of ordinary skill in the art, unless there is actual difficulty in making the application. The “improvement” here, although not articulated by Petitioner, is inherent with the technique, not requiring use of separate antennas for transmitting and receiving, i.e., eliminating the need for additional parts. Further, it is not necessary to show that a modification is the “best option,” because any “suitable option” would suffice. See Intel Corporation v. Qualcomm Incorporated, 21 F.4th 784, 800 (Fed. Cir. 2021). Here, Patent Owner does not assert that one of ordinary skill in the art would have had difficulty modifying Paulraj to use some of the same antennas both for transmitting and for receiving. Nor does Patent Owner dispute that it was well known to one of ordinary skill in the art to use the same antenna(s) for both transmitting and for receiving. We further note the following description in the Specification of the ’083 patent: “The typical CT/MD [cellular telephone/mobile device] has one transmitter and one receiver (T/R), with one antenna.” Ex. 1001, 1:47–48. That statement is fully consistent with Petitioner’s assertion that it was well-known to use the same antenna for transmitting and for receiving. For the foregoing reasons, notwithstanding Patent Owner’s arguments to the contrary, we determine that Petitioner sufficiently has shown that it would have been obvious to one of ordinary skill in the art to modify Paulraj such that some of the same antennas would be used both for transmitting and for receiving, according to limitations 1[b], 1[d], and 1[e].” slip op. at 36
Patent outcomesUS 9,191,083 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,191,083 - Deltran USA LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- Strike new argumentNew argument consideredOther
“Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Deltran USA LLC / Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over the Richardson-based grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding[.]” Pet. 22. Patent Owner also “does not propose any terms need to be construed.” PO Resp. 15. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- BurdenDecided for patent owner
“With respect to Petitioner’s allegations that rest on AAPA, we determine Petitioner has failed to show that claims 2, 10, and 11 are unpatentable. Our rules require that a petition for inter partes review must base the asserted challenges on “prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2) and (4). And, a petitioner who relies on applicant admitted prior art as the basis, or part of the basis, of a ground, runs afoul of § 311. Qualcomm, 134 F.4th at 1365; see also USPTO Memorandum, Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (Jul. 21, 2025), available at www.uspto.gov/sites/default/ files/documents/aapa_memo_final__signed.pdf. We acknowledge but reject Petitioner’s position that its combinations discussing AAPA do not “rely” on AAPA but rather rely on U.S. Patent No. 5,793,185 (“the ’185 patent”), described in the ’203 patent as prior art. Pet. Reply 26. A petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104 (b)(4). Here, Petitioner’s contention that the Grounds 2 and 5 actually rely on the ’185 patent when discussing AAPA is inconsistent with the Petition. In particular, the Petition does not cite to or direct our attention to any specific details from the ’185 patent to support its challenges. See generally Pet. 54–57, 76–77. Accordingly, Petitioner has failed to show, by a preponderance of the evidence, that claims 2, 10, and 11 would have been unpatentable over the combination of Richardson, Zhao, and AAPA as well as over the combination of Yu, Paparrizos, and AAPA. Petitioner’s alternative allegations based on Epower-20/Epower-21 are considered below.” slip op. at 18
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Apple Inc. v. Smith Interface Technologies, LLCAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01084 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–4, 8–18, 22–30, and 34–39 are unpatentable as obvious over Shiplacoff and over Shiplacoff combined with Nan.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof. Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner’s declarant, Loren Terveen, Ph.D., testifies that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 22. Patent Owner agrees with this definition. PO Resp. 13 (citing Dec. 5). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“according to the Phillips standard.” Pet. 4. Patent Owner contends that under the plain language of claim 1, the “one or more criteria” is satisfied when a “movement parameter” of “the second input” is detected to be “above a movement threshold.” PO Resp. 14. Patent Owner contends that under the plain language of claim 27, the “second one or more criteria” is satisfied when “a duration parameter” of the “second input” is detected to be “above a duration threshold.” Id. at 15. Patent Owner contends that the plain language of limitations [1j] and [1k] requires an operation capable of detecting a second input by a second contact that includes movement across a display in a direction, determining whether the second input meets or does not meet the recited criteria, and triggers performance of each of the corresponding display actions as appropriate. Id. at 15–19. Patent Owner 15. Id. at 21–23. Patent Owner contends that the plain language of limitations [27d]–[27f] recited in claim 27 require an operation that enables the device to detect a second input by a second contact that includes movement across the display in a direction, determine whether the second input meets or does not meet the two recited criteria, and trigger performance of each of the recited display actions as appropriate. Id. at 19– 20. Patent Owner contends that for “the second input” recited in limitations [1j] and [1k], “the second input” must be detected in the same operational context. Id. at 23–24. In particular, Patent Owner contends that limitations [1j] and [1k], and similar limitations recited in claims 15 and 27, “require a single, common contact event as the starting point of the claimed logic operations.” Id. at 24; see id. at 25–26. We do not need to determine whether Patent Owner’s proposed constructions are correct, because under either Petitioner’s or Patent Owner’s proposed constructions, we find that the prior art would have rendered all challenged claims obvious as discussed below in our patentability analysis.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“at 418; see also id. at 421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an automaton.”). Patent Owner’s contention and the supporting testimony of Dr. Madisetti does not address Shiplacoff’s teaching of using a gesture, such as Shiplacoff’s flick gesture, to return to launch screen. We agree with Petitioner and Dr. Terveen in finding that Shiplacoff’s disclosure that “returning to the launch screen . . . is performed by performing a gesture” (Ex. 1004 ¶ 99) such as a flicking gesture (Ex. 1004 ¶¶ 126, 129; Ex. 1023 ¶ 13) teaches using a flicking gesture to return from home screen to launch screen. See Pet. 16, 22–24; Ex. 1003 ¶¶ 52–53, 59; Ex. 1023 ¶ 13; Reply 7–10. Because Dr. Terveen’s testimony is consistent with and supported by the teachings of Shiplacoff as a whole (in contrast to that of Dr. Madisetti), we credit the testimony of Dr. Terveen in finding that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flick gesture as taught by Shiplacoff, yields the predictable result of using a flick gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“articulate why a person of ordinary skill in the art would have used Shiplacoff’s flicking gesture to switch from full screen mode to the launch screen. PO Resp. 47–49. Petitioner contends that Shiplacoff’s swipe up gesture teaches limitation [1j] by including a movement parameter above a movement threshold. Pet. 17–23. Petitioner contends that Shiplacoff teaches that a user can perform another gesture to return to the home screen. Id. at 23. Petitioner contends that when a gesture different from the swipe up gesture is used to return to the home screen, a person of ordinary skill would have used a flicking gesture because the flicking gesture has a different movement parameter than the swipe up gesture, namely, a movement parameter that does not meet the movement threshold. Pet. 23– 24 (citing Ex. 1004 ¶¶ 99–102, 167; Ex. 1003 ¶¶ 60–61). We agree with Petitioner for the reasons given in the Petition and as discussed above. We reiterate that using a gesture to return from home screen to launch screen as taught by Shiplacoff, where the gesture is a flicking gesture as taught by Shiplacoff, yields the predictable result of using a flicking gesture to return from home screen to launch screen. Ex. 1023 ¶ 13; Ex. 1003 ¶¶ 52–61; KSR, 550 U.S. at 416. We disagree with Patent Owner’s contention that Shiplacoff teaches away from using the flicking gesture to switch from full screen mode to the launch screen because, according to Patent Owner, Shiplacoff already uses the flick gesture to perform scrolling in full screen mode. PO Resp. 49–52 the same gesture in a given mode can be assigned to different functions depending on where, when, and how the gesture is input by the user, as discussed above. Reply 11–12 (discussing Shiplacoff’s teaching of associating the same tap gesture with different functions depending on where the tap occurs), 13–14 (discussing Duarte’s teaching of associating both a drag gesture and a scrolling gesture to the same mode). Ex. 1023 ¶¶ 16–19. We agree with Petitioner and Dr. Terveen, that based on the teachings of Shiplacoff (and, by incorporation, Duarte), a person of ordinary skill in the art would have recognized that a flick started in area 102 or near an edge of screen 101 and continuing onto screen 101 would be distinguished from a flick entirely within screen 101 based on location, and would perform a different function. Ex. 1023 ¶¶ 18–19. We also agree with Petitioner and Dr. Terveen, that Duarte teaches associating a gesture with one function when a modifier key is not pressed, and associating the same gesture with a different function when the modifier key is pressed, such that a flick performed when the key is not pressed would perform one function such as scrolling and a flick performed when the key is pressed would perform another, such as changing the display mode. Reply 15 (citing Ex. 2003 ¶ 64; Ex. 1023 ¶ 20). We agree with Petitioner that Shiplacoff does not teach away from using a flicking gesture to change from full screen mode to home screen because it “does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Reply 10 (quoting Depuy Spine, 567 F.3d at1327).” slip op. at 25
Patent outcomesUS 10,649,578 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,649,578 - Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentablePTAB · Jan 14, 2026 · IPR2024-01089 · APJ Sharon Fenick · IPR · Final written decision
Claims 1, 2, 9–11, 13, 15, 16, 56–64, and 84 are unpatentable as obvious; claim 14 was not shown unpatentable because the motivation to combine the gesture teachings was not established.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“In our Decision on Institution, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advanced-level degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 9. Additionally we did not adopt Petitioner’s proposed additional requirement that one of ordinary skill of the pertinent technologies employed by the ’212 patent.” Id. We adopted, for the purposes of the Decision on Institution, the portion of the definition proposed by Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” as “consistent with the problems and solutions in the ’212 patent and prior art of record and . . . supported by declarant testimony.” Id. Patent Owner adopted this definition (PO Resp. 12–13), noting Dr. Cockburn’s testimony regarding this definition (Ex. 2006, 12:15– 21). Patent Owner’s declarant, Dr. Madisetti, also agreed with and adopted this definition. Ex. 2005 ¶¶ 23–25. For the same reasons discussed in the Decision on Institution, we again adopt this definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction The parties’ papers include some discussion of claim construction. PO Resp. 13–17; Pet. Reply 1–2; PO Sur-reply 2–3. Each party asserts, and we agree, that there is no controversy that would require us to decide any claim construction issue. Pet. Reply 2; PO Sur-reply 3; see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
Patent outcomesUS 10,671,212 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,671,212 - Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentablePTAB · Jan 8, 2026 · IPR2024-01091 · APJ Jameson Lee · IPR · Final written decision
Claims 30 and 62 are unpatentable over the respective Kim and Burrough combinations; claims 1, 32, 34, and 64 were not shown unpatentable because the cited gestures lacked a common starting point.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“gesture” must refer back to the same gesture reflects the plain meaning of the claim language. In each independent claim, the structure and usage of the language in dispute are the same. Only one gesture detection is recited, and there is no language reasonably indicating repetition or reiteration of detection for any reason at any time. Patent Owner’s position that to meet “the gesture” recitations, prior art “gestures” must all share a common starting point also makes sense and is appropriate. The same gesture must start from the same starting point or else it is not the same gesture. Specifying the understanding this way avoids treating two similar gestures as the same gesture, if they have different starting points. For instance, two taps may be the same in every way, except for their starting points. They are not the same gesture in the context of these claims.” slip op. at 19
- Expert testimonyOther
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11
- BurdenNot shown unpatentable
“Neither the tap-and-hold gesture in the bottom path of Kim’s Figure 7 nor the “long press input” and “long press event” of Kim such as that shown in Kim’s Figure 5 is the double-tap gesture Petitioner relies on to satisfy limitation [1.f]. Neither has been shown to have a common starting point with the double tap. Thus, Petitioner’s showing is inadequate. Limitation [1.i] recites: [1.i] when the magnitude of the duration of the gesture being detected on the touch screen on the object is greater than a second magnitude threshold, perform another operation. Pet. v. Petitioner explains: Kim teaches or renders [1.i] obvious. APPLE-1003, ¶62. Kim further describes “another operation” that is performed when the magnitude of the duration of the gesture is greater than a second magnitude threshold—specifically, a minimum threshold to be deemed an intentional touch. Specifically, Kim explains that, “[i]f detecting a user gesture, namely, if receiving an input event from a user through the touch screen, the mobile device determines the type of an input event.” APPLE-1004, [0053]. Kim states that, “[i]f an interrupt is not a request for the activation of the zoom mode as the result of determination in step 205, the mobile device can perform some action in connection with an interrupt (step 207),” shown in Figure 2a below. APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶63. [Figure 2A of Kim is a flow diagram of a method for a touch-based control in a zoom mode (Ex. 1004 ¶ 20)] Kim additionally explains that if the mobile device determines that a detected user gesture does not correspond to any particular input event, “the mobile device disregards the received input event.” APPLE-1004, [0053]. Based on Kim’s disclosure of “disregarding” a received input, a POSITA would have understood that, for the detected interrupt (step 203) to be sufficient to cause the mobile device to “perform other action” (step 207), a magnitude greater than a minimum threshold value (e.g., the minimum threshold of an intentional user input) is relied upon, or rendered obvious, by Kim. APPLE-1004, FIG. 2a; APPLE-1003, ¶64. Thus, when the magnitude of the gesture is greater than a second magnitude threshold, the device “performs other action” (e.g., display requested menu). APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶64. A POSITA would have understood that such an interrupt would be caused by a gesture that is longer in duration than the second threshold (as necessary to avoid the gesture from being disregarded), shorter than the duration necessary for a long press threshold, and a different gesture than a double tap gesture. APPLE-1003, ¶64. Pet. 24–26. As explained by Petitioner, the interrupt gesture relied on by” slip op. at 40
Patent outcomesUS 10,936,114 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,936,114 - Apple Inc. v. Smith Interface Technologies, LLCNo claims unpatentablePTAB · Dec 31, 2025 · IPR2024-01085 · APJ Jameson Lee · IPR · Final written decision
Claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 were not shown unpatentable under either § 103 ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 9. We continue to adopt Petitioner’s stated level of ordinary skill in the art.5 C.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 4. We agree with the parties that no express construction of any claim term is necessary. D.” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner (PO Resp. 13) that when Ording refers to user interfaces that are “intuitive and transparent,” “transparent” in that context does not mean optically transparent but something readily understandable, like the preceding word “intuitive.” That makes more sense in context. Patent Owner’s expert, Dr. Mahon, explains that Ording’s paragraph 28, where the phrase “intuitive and transparent” is found, is not concerned with optical transparency, but with increasing user satisfaction with portable devices by offering multifunctional operations on user interfaces based on finger input. Ex. 2012 ¶ 54. Neither Petitioner nor Dr. Cockburn explains why “transparent” in that context should mean optically transparent. We credit the testimony of Dr. Mahon, and reproduce paragraph 28 of Ording below: The various applications that may be executed on the device may use at least one common physical user interface device, such as the touch screen. One or more functions of the touch screen as well as corresponding information displayed on the device may be adjusted and/or varied from one application to the next and/or within a respective application. In this way, a common physical architecture (such as the touch screen) of the device may support the variety of applications with user interfaces that are intuitive and transparent. Ex. 1006 ¶ 28. We credit Dr. Mahon’s testimony that “Ording is addressing [in paragraph 28] user interfaces that are user-friendly and intuitive to navigate and operate.” Ex. 2012 ¶ 55.” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The Zlider widget already is the least intrusive in the form as disclosed in the Ramos Paper/Ramos Video, placed off to the side of image content, not above and overlapping with image content. Petitioner’s semitransparency solution is for a self-created problem that otherwise does not exist, i.e., blocking the image by placing the Zlider widget directly over image content in Ording’s device. This is not reasoning with rational underpinning for making the Zlider widget partially semitransparent. Even assuming that the Zlider widget is properly placed directly over a camera image, making the Zlider widget semitransparent does not solve the intrusion problem, because the image and the Zlider widget may obscure each other, as shown in these illustrations provided by Patent Owner: [The illustrations show interference between a semitransparent Zlider widget and an underlying image] In its Reply, Petitioner asserts that it would have been well within the skill level of one of ordinary skill in the art to make adjustments to address a problem caused by such obscuring, such as by making the Zlider widget more visible as shown below: [The illustration shows one way Petitioner asserts one of ordinary skill in the art may apply to solve the obscuring issue (Reply 5–6)] Petitioner’s argument is misplaced. Although there may be graphic display techniques one of ordinary skill in the art may adopt to reduce the visibility problem if the Zlider widget were moved to directly above the image content as Petitioner proposes, that does not cure the problem of lacking a reasonable motivation to place the Zlider widget of the Ramos Paper/Ramos Video directly over image content. Still, there is the least obscuring and the least intrusion with the Zlider widget remaining where it is shown to be in the Ramos Paper/Ramos Video, side-by-side relative to the image content. It is irrational to make a modification that creates a problem, solely on the basis that a solution may be available to reduce the severity of the problem. Indeed, such a strained rationale shows that hindsight has played a part on Petitioner’s contention that a person of ordinary skill in the art would have put the Zlider widget over content as required by the claims.” slip op. at 30
Patent outcomesUS 10,649,580 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,649,580 - PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,764,803
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.