- Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentablePTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision
Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23
Patent outcomesUS 10,680,167 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,680,167 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentablePTAB · Mar 27, 2026 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–2 are unpatentable as obvious over each Bowen-based combination; claims 3–4 were not shown unpatentable, and the Nagahama-based grounds failed for all claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). 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 is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Consistent with the Institution Decision (Dec. 7), we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art. Patent Owner does not dispute that Dr. Bokor is qualified as a person of ordinary skill in the art in accordance with the assessment adopted. See Tr. 90:9–15. Patent Owner, however, questions Dr. Bokor’s knowledge on the formation of crystalline materials and seeks to exclude his related testimony. See PO Resp. 1–2, 27; PO Mot. Excl. 12–15. We address this issue infra Section V.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 24. Patent Owner does not raise any claim construction issues in its Response. See generally PO Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes. 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
- Strike new argumentNew argument consideredDenied
“A reply may only respond to arguments raised” in the patent owner response. 37 C.F.R § 42.23(b). The Consolidated Trial Practice Guide states that responding “does not mean proceed[ing] in a new direction with a new approach,” and “[w]hile replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered,” that is, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide § II.I (last updated Dec. 12, 2025) (“CTPG”), available at https://www.uspto.gov/patents/ptab/trial-practice-guide. We are not persuaded by Patent Owner’s assertions that Petitioner’s reply arguments on Parkin should not be considered. As discussed supra Section II.D.3.i above, the Petition includes the assertion that if Parkin’s CoFeB electrodes were used to modify Bowen, the MgO polycrystalline or single-crystal layer would still have the same 001 orientation. Pet. 33–34 (citing Ex. 1024 ¶ 129; Ex. 1062, 9:58–10:2, 18:49–51; Ex. 1005, 4:30–32). Petitioner’s support in the Petition references disclosures relating to Parkin’s Figure 3A (Ex. 1062, 18:49–51), which discloses a MgO(100) tunnel barrier, and the Petition also notes that the structure of Figure 3A may be inverted. Pet. 40 (citing Ex. 1062, 17:7–10). Patent Owner’s arguments, in large part, are related to Petitioner’s arguments in the Reply relating to Parkin’s Figure 11. Parkin’s Figure 11 is an embodiment where the structure of the devices of Figure 3A is inverted. See Ex. 1062, 22:29–33. We do not find that Petitioner’s arguments that are at issue in the Reply represent a new direction in its approach—the Petition is clearly based on the assertion that if Parkin’s CoFeB electrodes are used in Bowen, the device would have a MgO(001) tunnel barrier layer. Further, the Petition refers to Parkin’s disclosure that the device in Figure 3A may be inverted, which would be encompassed by the Figure 11 embodiment. Moreover, in the Institution Decision, we invited additional briefing on whether Parkin’s storage magnetic electrode was an amorphous ferromagnetic electrode, which relates to Parkin’s Figure 11 (Dec. 28–29). We are also not persuaded by Patent Owner’s argument that the Petition’s assertions do not correspond to what Petitioner argues in the Reply because they were referred to in the section pertaining to limitation 1[e]. The Petition includes a cross-reference in the limitation 1[d] discussion on the tunnel barrier layer limitation: “if Sunai’s or Parkin’s CoFeB electrodes are used as described in Claims 1[e] and 2 in this Ground, one of skill would understand that the MgO . . . would still have the same (001) orientation.” Pet. 33. Further, Petitioner’s arguments in its Reply properly respond to arguments made on contested issues. Patent Owner’s contentions on the merits in its Response are largely based upon the assertion that the modified MTJ of Bowen would not have a MgO(001) layer as claimed. See PO Resp. 4–10, 18–48. Petitioner’s reply arguments on Parkin relate to whether there would be a MgO(001) layer in its structure, so we find that Petitioner’s arguments on Parkin in its Reply (Pet. Reply 2–5) and the related evidence are appropriately responsive. slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find that there is sufficient evidence in support of Petitioner’s assertion of the rationale to replace Bowen’s electrodes with CoFeB and anneal them. As discussed supra Section II.D.ii.2, Parkin’s Figure 11 depicts and describes a storage electrode that may be composed of amorphous CoFeB, with the formation of a MgO(001) barrier layer atop it. See Ex. 1062, 22:29–66. Patent Owner argues that Parkin’s benefits are because its CoFeB electrode is amorphous (PO Resp. 51–52), but this is not accurate. In Parkin, the CoFeB amorphous electrode crystallized at the interface layer between the barrier and the electrode. Id. at 19:6–19. Parkin discloses that higher TMRs were attributable to the crystallization of CoFeB. Id. at 18:63–19:22. Parkin also discloses that its completed CoFeB- MgOH(001)-CoFeB device was annealed with resulting high TMRs. Id. at 17:60–18:16. These disclosures provide support that one of skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB and anneal to crystallize them because of the known improvements of TMR. Additionally, Parkin’s disclosures support that the results of the combination would have been predictable. That is, Parkin actually discloses an amorphous CoFeB electrode, formation of a MgO(001) tunnel barrier on the amorphous electrode, and annealing the assembly, with a resulting high TMR. Accordingly, Petitioner has provided reasoning with rationale underpinning for the motivation to combine. See KSR, 550 U.S. at 415 (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).” slip op. at 31
Patent outcomesUS 8,405,134 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,405,134 - Apple Inc. / Google LLC v. Spacetime3d, Inc.Some claims unpatentablePTAB · Jun 13, 2024 · IPR2023-00577 · APJ David C Mckone · IPR · Final written decision
Claims 14–18 are unpatentable as obvious over either Robertson, Gralla, and Gettman or Sauve and Tsuda; claims 1–13 were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for patent owner
“1. “3D space” and “two-dimensional (2D) space” As we stated in the Institution Decision, at page 20, the parties agree” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Remaining claim terms Based on the record before us, we do not find it necessary to provide” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“predictably improved Sauve’s quick pick interface, and would have promoted space efficiency and conveyed order more clearly. Id. at 59–60 (citing Ex. 1003 ¶ 159). Petitioner further argues that the combination would have exploited spatial memory and more efficient use of screen space and, thus, would have been a differentiator among competing web browsers. Id. at 60–61 (citing Ex. 1003 ¶¶ 160–162). Petitioner argues that a skilled artisan would have had a reasonable expectation of success in making the combination because GUIs, web browsers, and simulated 3D environments were all well-known technologies that had been demonstrated successfully in the real world. Id. at 61 (citing Ex. 1003 ¶ 163). Dr. Fuchs’ testimony has rational underpinning, is logical and well-reasoned, and, accordingly, we give it substantial weight.” slip op. at 64
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Gurley, 27 F.3d at 553. We have considered the portions of Sauve and Tsuda cited by Patent Owner and Dr. Schaefer, and find nothing that would discourage or lead in a direction divergent from the path taken by the inventor. Other than repeating Patent Owner’s argument that Sauve and Tsuda provide drastically different solutions for moving from one active window to another, Dr. Schaefer does not explain why he concludes that the solutions teach away from one another or point to evidence to support that conclusion. Ex. 2014 ¶¶ 225–227.” slip op. at 65
Patent outcomesUS 8,881,048 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,881,048 - Motherson Innovations Co., Ltd. v. Magna Mirrors Of America, Inc.Some claims unpatentablePTAB · Oct 5, 2021 · IPR2020-00777 · APJ Jessica C Kaiser · IPR · Final written decision
Claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts a person of ordinary skill in the art “would have” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“a preponderance of the evidence that claims 1, 2, 5, 8–11, 15, 16, 26, and 34–36 of the ’648 patent are unpatentable, but has not shown by a preponderance of the evidence that claims 3, 4, 6, 7, 12, 13, 17–25, and 27– 33 of the ’648 patent are unpatentable, as summarized in the following table: Claims” slip op. at 75
Patent outcomesUS 10,261,648 mixed§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,261,648 - Polycom, Inc. v. Directpacket Research, Inc.Some claims unpatentablePTAB · Jan 11, 2021 · IPR2019-01234 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 2–5, 15–17, 23–26, 29, and 30 are unpatentable over the stated obviousness grounds; claims 8, 9, 19, 20, 27, and 28 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Decision on Institution, we adopted Petitioner’s proposed skill level, that is, that one of ordinary skill in the art would have a Bachelor’s degree or equivalent in electrical engineering, computer engineering, or similar field, and at least two years of experience in a relevant field such as telecommunications or multimedia communications. Inst. Dec. 20. We also agreed with Petitioner that one of ordinary skill would have some familiarity with the design and implementation of VoIP and multimedia networks. Id. We did not agree, however, that the level of qualifications included monitoring and maintaining VoIP and multimedia networks, as Petitioner asserted, and therefore declined to adopt those requirements. Id. ordinary skill in the art adopted in the Decision on Institution to include “familiarity with the design and implementation of VoIP and multimedia networks,” but further described this requirement to include other requirements: an understanding of the techniques employed by network firewalls and the issues they present with respect to establishing and conducting multimedia communication sessions; an understanding of the performance demands placed on the network by multimedia communications, and the constraints that such demands place on processing and security measures that could be adopted; and a recognition of the distinctions between prior art firewall traversal solutions and the inventions of the ’978 Patent. PO Resp. 21–22. Patent Owner refers to GPAC, which identifies the factor of the “type of problems encountered in the art” as a consideration in determining the level of ordinary skill in the art. Id. at 22 (citing In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995)). We have reviewed the relevant technology and claims of the ’978 patent, as well as the technology of the asserted prior art, and we adopt the same qualifications as those adopted in the Decision on Institution because they are commensurate with the relevant technology. These qualifications are similar to presented by Petitioner, with the” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner relies on the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Pet. 20. Patent Owner indicates that its arguments are also based upon the ordinary and customary meaning of the terms as they would be understood by one of ordinary skill in the art. PO Resp. 22. We determine that it is not necessary to provide an express interpretation of any of the terms of the claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“As discussed above, we agree with Petitioner that Kirchhoff discloses the use of SSL, a protocol that uses data encryption (Ex. 1005, 8:47–49). We also agree with Petitioner that Krtolica discloses the use of HTTP protocols on port 80 (Ex. 1004, 6:23–24), and does so with a goal of maintaining high network security (id. at 1:7–10, 2:33–36). As Kirchhoff discloses, and Dr. Lavian’s testimony supports, one of ordinary skill in the art would have been aware that port 443, rather than port 80, would be used for secure web connections using SSL, which includes the use of encryption, and this would have resulted in enhanced network security. See Ex. 1005, 3:38–41; Ex. 1002 ¶¶ 52, 69, 108. As Dr. Lavian testifies, SSL/TLS was the most widely deployed security protocol in the world and the well-known use of SSL in HTTPS protocol enables secure web-based e-commerce. Ex. 1002 ¶¶ 69, 108; Ex. 1035 ¶ 8; Ex. 1006, 5. And, Krtolica has a stated goal to maintain network security. Ex. 1004, 1:7–10, 2:33–37. We find this evidence provides a sufficient rational underpinning in support of obviousness for combining the teachings of Krtolica and Kirchhoff. See KSR, 550 U.S. at 418. Owner’s arguments that use of encryption in SSL was optional and adding encryption would allegedly undermine network security. Nor do we find persuasive the argument that the Petitioner’s motivation to combine based on efficiency is insufficient, because Petitioner relies on another rationale for the combination of Krtolica and Kirchhoff, that is, enhanced network security, also discussed above. We additionally do not find persuasive Patent Owner’s arguments that combining Krtolica and Kirchhoff would render the system of Krtolica unsatisfactory for its intended purpose because, as Petitioner argues, this assertion is contradicted by the state of the art at the time. See Pet. Reply 9. As discussed above, Dr. Lavian explains that there were known systems having firewalls with SSL traversal at the time of the invention. Ex. 1002 ¶¶ 53, 59–65; Ex. 1035 ¶ 20; Ex. 1014. Moreover, the ’978 patent uses encryption with firewalls using a single-port protocol, and Patent Owner does not direct us to any disclosure in that patent that indicates that the use of encryption with a single-port protocol was inventive in that the system, or that encryption had to be done in a special manner. See Pet. Reply 3 (citing Ex. 1001, Fig. 3 (at 311, 341), Fig. 5 (503, 508)); see also Ex. 1001, 6:4–8. In a similar vein, Patent Owner argues that due to incompatibilities the combination of SSL with Krtolica would be unsuccessful, and we address this issue below.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Where the prior art contains “apparently conflicting” teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered “for its power to suggest solutions to an artisan of ordinary skill . . . consider[ing] the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In Hosner, AES encryption appears to have one of the higher processing speeds of the algorithms tested. See Ex. 1006, 23. Further, the ’978 patent itself supports the acceptable performance of AES encryption in single-port protocol, stating that “[a]ny method or algorithm of encryption may be used” with its invention “including, but not limited to 128-bit find Patent Owner’s argument on the use of AES to be persuasive. We have reviewed Petitioner’s explanations and supporting evidence as to how the combination of Kirchhoff and Krtolica teach the limitations of claims 4, 16, and 24, and we agree with and adopt Petitioner’s analysis. Pet. 75–76, 81.” slip op. at 65
Patent outcomesUS 7,710,978 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,710,978 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00879 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 2, 4–8, 13–16, 19–21, 24, 25, and 27–29 are unpatentable as anticipated by Iida; claims 3, 10–12, and 26 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In the Decision on Institution, we determined that Petitioner’s proposed description of the qualifications of a person of ordinary skill in the art aligned with the technology and claims of the ’969 patent. Inst. Dec. 24. Patent Owner does not challenge this determination and states that it has applied the Board’s adopted definition of one of ordinary skill in the art. PO Resp. 2. Dr. Butler testifies that the adopted level of art in the art would not have any effect on the opinions presented in his declaration, even though Dr. 6 Available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf. Butler had previously presented a different proposed qualifications. Ex. 2011 ¶ 13. Accordingly, for the reasons given in the Decision on Institution, we adopt Petitioner’s proposed level of ordinary skill, which is that a person of ordinary skill in the art should have:” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “interactive user interface” In the Decision on Institution, we construed the term “interactive user interface” (“IUI”) as “a display with which a user may interact to result in the portable device taking action responsively.” Inst. Dec. 19. The parties have presented additional arguments in additional briefing on the term’s construction, which we have further considered, and, as discussed below, we modify the interpretation of the term. See PO Resp. 7–16; Pet. Reply 1–3. a. Petitioner’s Assertions In the Petition, Petitioner asserts that the term “interactive user interface” should be interpreted as “a display with which a user may interact to result in the computer taking action responsively.” Pet. 14. Petitioner argues that this proposed interpretation is consistent with the plain and ordinary meaning of the term. Id. at 13. Petitioner also contends that although the term “interactive user interface” is not used in the ’969 patent specification, the specification consistently describes the terminal output component as a “display mechanism,” and the interactive user interface is presented on the terminal output component in the claims. Id. (citing Ex. 1001, 4:40). Petitioner contends that a number of displays in the ’969 patent respond to text inputs from an input component to elicit a responsive action, and refers to an example of the input of registration information in screen 515 in Figure 5, where, if the input is successful, follow-up screen 517 is produced, but otherwise there is an error message. Id. at 13–14 (citing Ex. 1001, 9:52–54, 7:53–56). In its Reply, Petitioner asserts that the ordinary meaning of the term “interactive user interface” is “a presentation (display) with which a user may interact to result in the computer (portable device) taking action responsively.” Pet. Reply 1. This is similar to the construction that Petitioner previously proposed in the Petition, however, Petitioner now proposes that the “computer” can be considered to be a “portable device,” and a “display” can also be considered to be a “presentation. See Pet.14. According to Petitioner, the claims require that the interactive user interface be presented on the terminal output component. Pet. Reply 1. Petitioner argues that the specification describes that it is a portable device that responds to user interaction with the IUI, such as the interaction with a login screen text box. Id. at 2 (citing Ex. 1046, 52:11–55:13; Ex. 1001, 7:55–56). Petitioner asserts that the claims require that it is the portable device that responds to user interaction, with the “fourth program code” executing in response to user interaction with the interactive user interface. Id. Petitioner compares the claim of the parent ’047 patent, which was narrowed to refer to “the interactive user interface is configured to enable the user to cause the portable device processor to execute program code stored on the portable device memory,” to the claims here. Id. Petitioner also asserts that “‘[p]resentation’ is used and described in the ’969 patent as corresponding to a ‘display.’” Id. at 1.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“2. Analysis A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“obviousness, we need not determine whether Patent Owner’s evidence of objective indicia of nonobviousness weighs even further against a conclusion of obviousness. See Hamilton Beach Brands, Inc. v. f’real Foods, LLC, 908 F.3d 1328, 1343 (Fed. Cir. 2018) (holding, in affirming Board decision determining that petitioner had not shown unpatentability, that “objective indicia of nonobviousness” “need not [be] addressed” because the court “affirmed the Board’s findings regarding the failure of the prior art to teach or suggest all [claim] limitations”); Palo Alto Networks, Inc. v. Finjan, Inc., 748 F. App’x 317, 324 (Fed. Cir. 2018) (non-precedential) (affirming Board decision holding that petitioner failed to establish unpatentability due to a lack of disclosure of a claim limitation, without reaching secondary considerations, and holding that “it was not necessary for the Board to consider” expert testimony “limited to the issue of secondary considerations”).” slip op. at 78
Patent outcomesUS 9,059,969 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,059,969 - Ingenico Inc. v. Ioengine, LLCSome claims unpatentablePTAB · Sep 21, 2020 · IPR2019-00929 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 55, 57–63, 67–72, 74, 77, 78, 81–87, 89, 92–98, 100, 103, 104, 106–112, 116–121, 123, and 126–129 are unpatentable; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the Board’s adopted definition of a POSITA. PO Resp. 3; Ex. 2139 ¶¶ 12, 13. Both parties’ experts state, however, that their opinions would not change based upon which party’s definition of a POSITA is adopted. Ex. 2139 ¶ 13; Ex. 2110, 240:24–241:6.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“For these reasons, we find that Petitioner has shown by a” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“meet claims 74, 89, 100, and 123 because Davis “does not have two different devices on the client side.” PO Resp. 63–64. Patent Owner’s argument does not persuasively rebut Petitioner’s obviousness case, which relies on Iida, not Davis, to teach two devices on the client side—Iida’s digital camera 12 (a portable device) and terminal 14. Pet. 13–16, 60; Ex. 1003 ¶ 57, Figs. 1A, 1B. Furthermore, in Petitioner’s combination, a digital certificate is substituted for Iida’s user ID and password. Pet. 61. Patent Owner does not dispute Petitioner’s contention that Iida discloses transmitting a user ID and password stored in memory 48 of camera 12 to image server 18 through terminal 14. Id. at 43–44 (addressing claim 71; citing Ex. 1003 ¶¶ 110, 113). Accordingly, Petitioner persuades us that the combination of Iida and Davis discloses the limitations of claims 74, 89, 100, and 123 (and claims 71, 86, 97, and 120 from which they depend).” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“First, Patent Owner has not argued that the licensed products are coextensive with the claims of the ’703 Patent, accordingly, there is no presumption of a nexus. See Lectrosonics, Paper 33 at 33.” slip op. at 94
Patent outcomesUS 9,774,703 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,703 - Apple Inc. / Fitbit, Inc. v. Valencell, Inc.Some claims unpatentablePTAB · Aug 6, 2018 · IPR2017-00319 · APJ James B Arpin · IPR · Final written decision
Claims 1–2 and 6–13 are unpatentable as obvious; claims 3–5 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“demonstrated by a preponderance of the evidence that claims 1, 2, and 6–13 of the ’941 patent are unpatentable based on the challenges asserted in the Petition, but that Petitioner fails demonstrated by a preponderance of the evidence that claims 3–5 of the ’941 patent are unpatentable based on the challenges asserted in the Petition. In particular, we determine that:” slip op. at 77
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “physiological information” (Claims 1–13) Petitioner argues that the Specification of the ’941 patent provides an” slip op. at 10
- ExcludeOther
“Although Patent Owner filed objections to evidence submitted with the Petition (Paper 14) and Petitioner filed objections to evidence submitted with Patent Owner’s Preliminary Response (Paper 12) and to evidence submitted with the Patent Owner Response (Paper 23), neither party filed a Motion to Exclude. Consequently, these objections are deemed waived. 37 C.F.R. § 42.64(c) (“A motion to exclude evidence must be filed to preserve any objection.”). Petitioner also filed a list of alleged” slip op. at 3
- PTAB / AIA Trials › Constitutional / APA (Arthrex, Oil States, due process)Decided for petitioner
“IV. PROCEDURAL ISSUES Patent Owner objects to the use of inter partes reviews as unconstitutional based, at least, upon the reasons presented in the petition for certiorari that was granted in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. PO Resp. 38; see Reply 21. On April 24, 2018, the U.S. Supreme Court upheld the constitutionality of inter partes review; thus, Patent Owner’s arguments are moot. Oil States Energy Servcs. LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365, 1370 (2018).” slip op. at 78
Patent outcomesUS 8,923,941 mixedClaim constructioncites KSR · GrahamPatents in suitUS 8,923,941 - Palo Alto Networks, Inc. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentablePTAB · Apr 11, 2017 · IPR2016-00159 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 2, and 6 are unpatentable over Swimmer; claims 3–5 and 10–15 were not shown unpatentable on the grounds decided.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“11 Petitioner does not allege, and we do not find, that Martin teaches or suggests the “Downloadable scanner” and “database manager” elements that we find to be lacking from Swimmer in our analysis of claim 10 in Section III.B.4.a.iv, supra. Accordingly, for the additional reasons set forth in that section, we also are not persuaded that Petitioner has carried its burden with respect to claims 12–14, which each depend from claim 10.” slip op. at 58
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“5. Secondary Considerations Patent Owner contends that its patented inventions have received” slip op. at 60
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“accord to the evidence, rather than its admissibility, and are not the proper subject of a motion to exclude. Although we recognize that Mr. Hawes did not begin working at Virus Bulletin until 2006 and did not personally attend the 1995 Virus Bulletin Conference (see Ex. 2045, 7:8, 13:17–19), we credit his testimony as based on his personal knowledge of Virus Bulletin’s regular business practices and his understanding of Virus Bulletin’s business records derived from his employment at and role as Chief of Operations at Virus Bulletin (see id. at 12:25–13:9; Ex. 1088 ¶¶ 1–5; Ex. 1089 ¶¶ 1–9; see also Fed. R. Evid. 803(6) (records kept in the course of regularly conducted business activity not excluded by hearsay rule)). Moreover, we agree with Petitioner that because Mr. Hawes’s testimony is based on his perceptions, rather than on any alleged scientific or specialized knowledge, Patent Owner’s reliance on Federal Rule of Evidence 702 (“Testimony by Experts”) is misplaced. See Pet. Opp. Mot. Excl. 10. Accordingly, we deny Patent Owner’s Motion to Exclude as it relates to Exhibits 1088 and 1089.” slip op. at 76
- ExcludeMotion to exclude, deniedMixed
“general approach for considering challenges to the admissibility of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., Case IPR2013-00053, slip op. at 19 (PTAB May 1, 2014),” which stated that, “similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented.” Id. (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”)); see also Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006) (“Vaughan’s challenge goes to the weight of the evidence rather than the admissibility of Lueptow’s testimony and analysis.”). In reaching our decision, we have considered and weighed the testimony provided by Dr. Goodwin and Dr. Medvidovic, as well as Petitioner’s arguments relying on that testimony, in light of Patent Owner’s arguments, but we decline to exclude the cited exhibits or the portions of the Reply citing them. Accordingly, Patent Owner’s Motion to Exclude is denied to the extent it relates to Exhibits 1088 and 1089.” slip op. at 75
Patent outcomesUS 8,677,494 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,677,494 - Palo Alto Networks, Inc. / Blue Coat Systems LLC v. Finjan, Inc.Some claims unpatentablePTAB · Apr 11, 2017 · IPR2016-01174 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 2, and 6 are unpatentable as obvious over Swimmer; claims 3–5 and 10–15 were not shown unpatentable over the asserted grounds.
RulingsFinal written decision- BurdenFwd mixedMixed
“a preponderance of the evidence that claims 1, 2, and 6 of the ’494 patent are unpatentable under 35 U.S.C. § 103(a) over Swimmer. Petitioner has not demonstrated that claims 10, 11, and 16 are unpatentable over Swimmer or that claims 3–5 and 12–14 are unpatentable over the combination of Swimmer and Martin. V. ORDER Accordingly, it is ORDERED that claims 1, 2, and 6 of the ’494 patent have been shown to be unpatentable; FURTHER ORDERED that claims 3–5 and 10–15 of the ’494 patent have not been shown to be unpatentable;” slip op. at 82
- Skill levelSkill level board ownDecided for patent owner
“2. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“1. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” 550 U.S. at 418. Rather, to prove obviousness, there must have been, at the time of invention, “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. In this case, we are not persuaded that Petitioner has identified such a reason to combine the Martin’s teachings with those of Swimmer in the fashion required by dependent claims 3–5 and 12–14. The burden to prove the unpatentability of these challenged claims rests with Petitioner, and we conclude for the foregoing reasons that Petitioner has not carried its burden.” slip op. at 60
Patent outcomesUS 8,677,494 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,677,494
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.