• The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentable
  PTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision

  The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10

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

    “a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19

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

    “claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24

  Patent outcomesUS 7,487,684 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 7,487,684
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00906 · APJ John F Horvath · IPR · Final written decision

  Claims 19–22 were not shown unpatentable because Petitioner did not establish that Ogata’s lens could be scaled for Parulski’s camera with a reasonable expectation of success.

  RulingsFinal written decision

  • Expert testimonyDecided for patent owner

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We agree with Patent Owner. The Petition contends that a person of ordinary skill in the art would have known that Ogata’s lens (using glass lens elements) could have been scaled to focus an image onto a 1/2.5” image sensor for use in Parulski’s camera. See Pet. 24–30; Ex. 1021, 36. Petitioner’s reply evidence and argument is not introduced to support that contention but a different contention—that a person of ordinary skill in the art would have known that Ogata’s lens could have been redesigned using aspheric plastic lens elements to focus an image onto a 1/3” image sensor. See n.11, supra. This is a new contention that does not support Petitioner’s 11 We note that Dr. Sasián’s analysis discloses how Kawamura’s lens can be modified by replacing the spherical glass lens elements with aspherical plastic lens elements, moving the aperture stop to the first lens element, changing the F number to 2.8, and reducing the effective focal length to focus an image onto a 1/3” image sensor rather than a 1/2.5” image sensor. See Ex. 1039 ¶¶ 25–30; App’x, 17–18. Dr. Sasián also opines that although this analysis illustrates how Kawamura’s lens could have been modified, a person skilled in the art “would have recognized that Ogata could have been similarly adjusted to yield a miniaturized form-factor.” Id. ¶ 25. because it is a new and untimely contention, we do not consider it further. See Consolidated Trial Practice Guide (Nov. 2019)12 (“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.”); see also Ariosa Diagnostics v. Verinata Heath, Inc., 805 F.3d 1359, 1368 (Fed. Cir. 2015) (“The Board must make judgments about . . . when a Reply contention crosses the line from the responsive to the new.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d at 1359, 1369–70 (Fed. Cir. 2016) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale to explain why one of skill in the art would have been motivated to combine” prior art references); Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed. Cir. 2019) (affirming the Board’s rejection of a reply argument presenting an “entirely new rationale” for why a claim would have been obvious).” slip op. at 18

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

    “first embodiment lens and the data entered into the “Lens Editor Data” spreadsheet are noticeable. First, the Abbe number for the third lens element is 42.72 in Ogata’s first embodiment lens and 26.5 (i.e., 38% smaller) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:46, with Ex. 1021, 36. Second, the data for the fourth and tenth aspherical surfaces are noticeably different. For example, the fourth order term (A4) for the fourth aspherical surface is 0.66 x 10-4 in Ogata’s first embodiment lens and 151.69 x 10-4 (i.e., 0.015) in the “Lens Data Editor” spreadsheet. Compare Ex. 1026, 7:55, with Ex. 1021, 36. Neither Petitioner nor Dr. Sasián explain these discrepancies.” slip op. at 15

  Patent outcomesUS 10,225,479 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,225,479
• Apple, Inc. v. Corephotonics Ltd.No claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00905 · APJ John F Horvath · IPR · Final written decision

  Claims 1–16, 18, 23–38, and 40 were not shown unpatentable because the asserted obviousness combinations did not establish a fused image with both Wide perspective and position POV.

  RulingsFinal written decision

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

    “In a dual-aperture camera image plane, as seen by each sub-camera (and respective image sensor), a given object will be shifted and have different perspective (shape). This is referred to as point-of-view (POV). The system output image can have the shape and position of either sub-camera image or the shape or position of a combination thereof. If the output image retains the Wide image shape then it has the Wide perspective POV. If it retains the Wide camera position then it has the Wide position POV. The same applies for Tele images position and perspective. As used in this description, the perspective POV may be of the Wide or Tele sub-cameras, while the position POV may shift continuously between the Wide and Tele sub-cameras. In fused images, it is possible to register Tele image pixels to a matching pixel set within the Wide image pixels, in which case the output image will retain the Wide POV ("Wide fusion"). Ex. 1001, 5:10–26.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We find Petitioner sets forth sufficient reasoning with rational underpinning to combine the teachings of Parulski and Konno. Parulski lenses, but fails to give lens prescription data for the two camera lenses. Konno discloses lens prescription data for a dual-lens camera utilizing two thin lenses. The combination, therefore, is one of familiar elements according to known methods to obtain predictable results or a substitution of one element for another known in the field to obtain a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 17

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

    “We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23. Accordingly, for the reasons discussed above, Petitioner has failed to demonstrate by a preponderance of evidence that claims 1 and 23 are unpatentable as obvious over the combination of Parulski and Konno.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Patent Owner argues that Petitioner and Dr. Durand have failed to demonstrate that Parulski teaches “the ‘fused image with a point of view (POV) of the Wide camera’ limitation” because their “sole argument that Parulski meets this limitation is based on the output [image] having the ‘wide image’s field of view.’” PO Resp. 29 (citing Ex. 1003 ¶ 51). Patent Owner further argues that “[n]othing in Parulski suggests that whatever image data from the tele image that might be ‘fused’ into the output would be modified to have the shapes and positions from the wide image POV” and “nothing in Dr. Durand’s declaration even attempts to establish [that] this admitted during his deposition that he had not provided an opinion about whether Parulski generates a fused image having both a Wide perspective POV and a Wide position POV. See PO Sur-Reply 5 (citing Ex. 2041, 52:25–54:20). We agree with Patent Owner. As we explain in § II.D.1, supra, claims 1 and 23 require generating a fused image having a Wide perspective POV and a Wide position POV. Petitioner’s only argument for how the combination of Parulski and Konno teaches this limitation is Parulski’s teaching of generating a fused image having a Wide position POV, i.e., having the field of view (FOV) of the Wide camera. See Pet. Reply 13 (“Parulski teaches . . . producing an output image that maintains the Wide position POV or the field of view of the Wide camera when the image was captured.”). Petitioner fails to demonstrate how Parulski’s image fusion method would also maintain the Wide perspective POV as required by independent claims 1 and 23.” slip op. at 20

  Patent outcomesUS 10,225,479 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,225,479
• Apple Inc. / Snap Inc. et al. v. Uniloc Luxembourg S.A.No claims unpatentable
  PTAB · May 23, 2018 · IPR2017-00225 · APJ Miriam L Quinn · IPR · Final written decision

  Claims 1–6 and 8 were not shown unpatentable because the Petition did not establish a persuasive reason to add a client-side message database to the asserted prior-art combinations.

  RulingsFinal written decision

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

    “We do not agree with Petitioner. Although the ’433 patent Specification provides for a message database at the transport server, that database is for storing the messages of the one or more recipients that are not available, and, therefore, cannot receive instant voice messages. Ex. 1001, 22:5363. When a user becomes available, database (storage) manager 710 retrieves the undelivered instant voice messages from the database, and client manager 706 delivers the messages to the designated, now available, recipients. Id. Thus, message database 710 at the transport server stores and retrieves instant voice messages upon command from the client manager 706, whereas message database 310, of Figure 3, stores and retrieves instant voice messages upon command of file manager 308. This distinction is significant because claims 1 and 6 directly link the recited “message database” to the “file manager,” and no other component of the disclosed system. Further, the recited “file manager” performs the “storing,” for example, “in response to a user request,” according to the claim language of claims 1 and 6. The ’433 patent Specification lacks any description of the transport server’s message database or database manager storing instant voice messages in response to a user request. Indeed, the transport server does not store instant voice messages in the database in response to a user’s request, because it only stores messages in the database when the recipient is unavailable. In fact, the message database of the transport server stores messages at the request of client manager 706, and on condition that a recipient is not available. Ex. 1001, 22:5363; see also id. at 8:3843 (describing the local server in a similar manner, delivering messages to the available recipients and temporarily storing the instant voice messages for unavailable recipients). Further, the Specification contains no disclosure of “distributed” applications or programs or any other indication that the “instant voice messaging application” is a “distributed” application with components placed throughout the system (at clients and servers). Petitioner’s reliance on Figure 7 as supporting the contention of a “distributed” application, as discussed above, is unavailing. Other than having the same name, the message database of the transport servers (Figure 7) is a different message database from the one recited in claims 1 and 6 and described in Figure 3.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proffered level of ordinary skill in the art focuses too generally on experience in “communications technology.” The enunciation of such experience is too generic to be useful in determining the level of ordinary skill in the art under any of the GPAC factors. For instance, experience with “communications technology” is untethered to addressing problems and solutions in facilitating short messaging services, such as in Vuori, or to whether active workers in the appropriate field would manifest such a general experience in “communications technology.” Vuori, for instance, focuses on facilitating short messaging service in the context of a wireless telecommunication network. See Ex. 1005 ¶¶ 57. Therefore, we cannot ignore that the field of work would be more narrow than generally “communications technology.” We find that Petitioner’s assessment is proper and consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1009) is directed to an instant messaging system in the context of telecommunication and computer networks, such as a Global System for Mobile Communications (“GSM”), General Packet Radio Service (“GPRS”), Universal Mobile Telecommunication Systems (“UMTS”), and the Internet. Ex. 1005 ¶¶ 3539, Figs. 3, 6; see also Ex. 1005 ¶¶ 14 (addressing messaging systems that use the Internet as a telecommunication and/or computer network). Thus, it is evident from the prior art that Petitioner’s assessment is appropriate because, in addition to a certain degree, a person of ordinary skill in the art would have experience in communications systems, particularly in messaging systems, data networks including VoIP and mobile telephony, or comparable industry experience. Consequently, we adopt Petitioner’s assessment of the level of ordinary skill in the art.” slip op. at 23

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “We find Petitioner’s rationale wanting. Petitioner proffers expert testimony of a reason to combine: “to improve the organization and retrieval of audio messages stored on a user’s device.” Ex. 1003 ¶ 109. Dr. Forys also states that “it would have been obvious to incorporate Holtzberg’s database structure into Abburi because such incorporation amounts to nothing more than applying a known technique (e.g., storing voice messages in a database) to a known device (e.g. the message recipient’s device in Abburi) ready for improvement to yield predictable results (a user device storing audio messages in a database).” Id. None of the proffered testimony is persuasive, and because it is not supported by either explanation or supporting facts, we give it little to no weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). First, there is no explanation as to why a person of ordinary skill in the art would either de-centralize Abburi or relocate the database in Holtzberg to achieve the “user device storing audio messages in a database.” Dr. Forys’s conclusion that the claimed message database would have been obvious is unexplained and belies the specific teachings in both Abburi and Holtzberg that rely on the architecture of their systems as having centralized storage. Without “a reasoned explanation that avoids conclusory generalizations,” Dr. Forys’s testimony is not sufficient. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (quoting Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)).” slip op. at 34

  • Strike new argumentNew argument disregardedDecided for patent owner

    “provides “specifics of how and why” Holtzberg is integrated into the system of Abburi. Reply 15. The argument and citations are not persuasive. The Reply Forys Declaration (Ex. 1019 ¶¶ 1214) provides new reasons for a motivation to combine (for example, motivation to provide storage at both the client and server for sent and received messages). This testimony does not just explain the rationale provided in the Petition (focused on incorporation of Holtzberg’s database at the user device of Abburi). Rather, Dr. Forys’s reply explanation provides an expanded rationale that is different from the rationale stated in the Petition. For example, Dr. Forys opines that a person of ordinary skill in the art “would understand that the communication link between the user device and the server system may be down or disrupted from time to time, and the recorded audio messages to be sent to the system must be stored until communication is reestablished.” Ex. 1019 ¶ 13. Dr. Forys’s opinion does not respond appropriately to the argument by Patent Owner that the teachings of Abburi and Holtzberg would have led away from incorporating a database at the client device. Rather, the reply opinion testimony diverges from the Petition’s rationale of improving organization and retrieval of audio at the client device. Put another way, the reasoning of redundancy of storage to account for communication failures between the server and the client is another rationale—different and distinct from the rationale asserted in the Petition.3 The Reply is not responsive to the teaching away argument, and it has come too late in the proceeding. See 37 C.F.R. § 42.23(b) (“A reply may only respond to arguments raised in the corresponding opposition or patent owner response”); Office Trial Practice 3 We find the further reasons in the Reply Forys Declaration similarly problematic. For instance, Dr. Forys opines that it would be convenient to playback older messages to recall their content, and would enable the user to track messages and avoid repeated queries to the audio message store. Ex. 1019 ¶ 13. Again, the Petition and the First Forys Declaration neither state nor explain a rationale based on convenience of local storage or of conservation of server resources. Indeed, the only reason or explanation timely provided addresses the generic benefit of organization and retrieval of data. Pet. 29. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (“While replies can help crystalize issues for decision, a reply that raises a new issue or belatedly presents evidence will not be considered and may be returned.”). Accordingly, we will not consider the new theories of obviousness in the Reply and Reply Forys Declaration. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367–68 (Fed. Cir. 2015) (finding reasonable the Board’s judgment about when a Reply contention crosses the line from the responsive to the new); see also Tr. 89:590:5 (counsel for Petitioner offering argument regarding whether Reply falls outside the permissible scope and responding that “you could eliminate our petitioner reply entirely and we still think that there is a complete showing that all claim elements are rendered obvious under all five grounds, both combinations”).” slip op. at 37

  Patent outcomesUS 8,995,433 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,995,433
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 28, 2017 · IPR2016-00593 · APJ Garth D Baer · IPR · Final written decision

  The Board held that claims 12–15, 21–23, 25–27, 33–38, 44, and 45 were not shown unpatentable because Pictometry was not established as a publicly accessible printed publication.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “Version 2.7 (“EFS 2.7 User Guide,” “Pictometry,” or “User Guide”) and, as the name suggests, is a user guide for the Pictometry software product. See Ex. 1004, xiii. Patent Owner argues that Petitioner does not demonstrate that Pictometry is prior art. PO Resp. 5–10. In our Final Written Decision in IPR2016-00594, we considered substantively the same arguments and evidence Patent Owner and Petitioner raise in this case. See IPR2016-00594 FWD 17–29; compare IPR2016-00594 Paper 31, 13–20 with PO Resp. 6– 13; and compare IPR2016-00594 Paper 33, 3–9 with Reply 4–11. In IPR2016-00594, we found Pictometry’s limited dissemination to some governmental entities subject to licensing restrictions was not sufficient to show public dissemination or public accessibility. IPR2016-00594 FWD 17–29. We adopt that same finding here. For the reasons explained in IPR2016-00594, we find that Petitioner has not established by a preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. §§ 102(b) and 311(b).” slip op. at 6

  • ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part

    “substantively the same as the arguments made in IPR2016-00594. In IPR2016-00594, we denied Patent Owner’s motion to exclude Exhibit 1004 (Pictometry), Exhibit 1011 (a Merriam-Webster Dictionary Definition “database” copied from a web page), Exhibit 2010 (Cohasset Town Report 2008), 2011 (LARIAC1 Pictometry Training), Exhibit 2012 (LAR-IAC2 Product Guide), Exhibit 2020 (“GIS: Pictometry: Oblique Imagery training), Exhibit 2021 (“Pictometry License Guidelines”), and Exhibit 2022 (“Pictometry – April 19, 2007”). IPR2016-00594 FWD 5–17. We granted Patent Owner’s motion to exclude Exhibit 2013 (article titled “Los Angeles County Extends its License Agreement with Pictometry for New Oblique Aerial Photos”), Exhibit 2014 (“Pictometry Administrative Training”), Exhibit 2015 (“Information about TXWILM Administrative Training”), Exhibit 2016 (“Pictometry Administrative Training”), Exhibit 2019 (“GIS Working Group Meeting Minutes”), Exhibit 2023 (“Welcome to Your End User Training”), Exhibit 2024 (“Electronic Field Study Getting Started Guide”), Exhibit 2025 (“Pictometry Announces Technical Advancements for GIS Professionals1”), and Exhibit 2026 (“Pictometry Announces Technical Advancements for GIS Professionals2”). Id. We adopt the same findings and conclusions here. For the reasons explained in IPR2016-00594, we deny the motion to exclude Exhibits 1004, 1011, 2010, 2011, 2020, 2021, and 2022, but grant the motion to exclude Exhibits 2013, 2014, 2015, 2016, 2019, 2023, 2024, 2025, and 2026. See id.” slip op. at 5

  Patent outcomesUS 8,823,732 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,823,732
• Xactware Solutions, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Aug 24, 2017 · IPR2016-00594 · APJ Bryan F Moore · IPR · Final written decision

  Petitioner did not prove claims 1–10 and 13–20 unpatentable because it failed to establish that Pictometry was a publicly accessible printed publication.

  RulingsFinal written decision

  • ExcludeMixed

    “Mot. Reply 3. Given the sequence of events, there is no prejudice to Petitioner, who introduced these documents and was served objections at an early stage. Patent Owner apparently cited to the documents in its Patent Owner Response to preserve the right to substantively respond to these documents rather than wait to see if they were presented in Petitioner’s Reply. Pursuant to our discretion under 37 C.F.R. § 42.5(c)(3), we do not dismiss Patent Owner’s Motion to Exclude due to allegedly untimely filed objections.” slip op. at 6

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “are also prohibited. Id. The MAPC Agreement states under “Confidentiality of Licensed Products” that the Licensed Products are commercially valuable, proprietary products owned by Pictometry and are treated by Pictometry as confidential and contain substantial trade secrets of Pictometry. Ex. 2009, 16, Article 8.4. The licensee agrees that it will not disclose, provide a copy of, or disseminate the Licensed Products and that its personnel will protect the Licensed Products from unauthorized use, disclosure, copying, and dissemination, and that access to the Licensed Products and each part thereof will be strictly limited. Id. We acknowledge that these represent significant limitations on the dissemination of the User Guide.” slip op. at 21

  • BurdenDecided for patent owner

    “involving the EFS software and provides no evidence that the EFS software and the EFS 2.7 User Guide were actually maintained confidential by the parties of the MAPC Agreement, or that the EFS software and the EFS 2.7 User Guide were inaccessible to those of ordinary skill in the art.” Reply 9. However, this improperly puts the burden to disprove public accessibility on Patent Owner. Although Patent Owner challenges whether Pictometry is a printed publication, the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in an inter partes review). Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable, and one aspect of such a showing is that the references relied upon are patents or printed publications. See 35 U.S.C. §§ 311(b) 316(e).” slip op. at 22

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

    “preponderance of the evidence that Pictometry was publicly accessible so as to render it a printed publication under 35 U.S.C. § 102(b). C. Anticipation of Claims by Pictometry Petitioner asserts that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry. Pet. 16. As noted above, we determine that Petitioner has not shown that Pictometry is a printed publication under 35 U.S.C. § 102(b). Thus, Petitioner has not established by a preponderance of the evidence that that claims 1–10 and 13–20 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Pictometry.” slip op. at 29

  Patent outcomesUS 8,542,880 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 8,542,880
• Xactware Solutions, Inc. v. Eagle View Technologies, Inc.No claims unpatentable
  PTAB · Aug 14, 2017 · IPR2016-00590 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 10, 11, 14, and 19 were not shown unpatentable under § 103 because the asserted art lacked a required movable-marker limitation and objective indicia outweighed the obviousness evidence.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “We do not agree with Petitioner that Avrahami’s pointing to and identifying seed points, constitutes movement of a first visual marker. Rather, as Patent Owner explains, “prior to the user’s click, the seed point does not exist, and thus there is nothing to move.” See PO Resp. 18 (citing 2008 ¶ 56). Avrahami’s characterization of the already-placed seed point as the “initial 2D seed point” supports Patent Owner’s position. See Ex. 1003, 44. The user cannot move an object that does not yet exist, and Petitioner offers no support to suggest that Avrahami’s seed points somehow exist before the user places them by clicking. See Pet. 14; Reply 2–4. There is also no indication that after placing the seed point, the user can move its location. See Ex. 2008 ¶ 56. To the contrary, Avrahami describes the algorithm as “fully automatic” after the user places the seed point. Ex. 1003, 43.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We note that in Reply, Petitioner makes an alternative argument that “placement of subsequent seed points after placement of a first seed point, as well as the addition of segmentations around such seed points, qualifies as ‘movement.’” Reply 3. We decline to reach this argument, however, because Petitioner raised it for the first time in its Reply. See 37 C.F.R. § 42.104(b)(5) (requiring that a petition must identify “the supporting evidence relied upon to support the challenge and the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge” and explaining that “[t]he Board may exclude or give no weight to the evidence where a party has failed to state its relevance or to identify specific portions of the evidence that support the challenge”).” slip op. at 10

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner
  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia outweighedDecided for patent owner

  Patent outcomesUS 8,818,770 not shown unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,818,770
• Arista Networks, Inc. v. Cisco Systems, Inc.No claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00306 · APJ Miriam L Quinn · IPR · Final written decision

  Claim 63 was not shown unpatentable because Spinney does not disclose performing the selecting and determining steps in parallel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “First, we give no credit to Dr. Chao’s opinion in this regard because it is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

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

    “is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

  Patent outcomesUS 7,023,853 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,023,853
• RPX Corporation v. Chanbond LLCNo claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00234 · APJ Jacqueline T Harlow · IPR · Final written decision

  RPX did not prove claims 1–31 unpatentable under § 103: the record lacked an adequate reason to combine the cited references.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “The broadest reasonable interpretation of the claim terms “digital stream” and “digital information stream” includes no requirement, however, that the packets of the recited stream must be differentiated from other packets by more than destination address. As explained above, independent claims 1 and 19 of the ’822 patent describe the “digital stream” as the product of the combiner combining demodulated channels identified as having information addressed to an addressable device. Ex. 1001, 12:29–40, 15:11–23. Claims 1 and 19 additionally state that the digital stream is output to the addressable device. Id. Neither claim 1 nor claim 19 recites further detail concerning the characteristics of the packets of the “digital stream.” Id. Moreover, the dependent claims of the ’822 patent suggest that a “stream” may include unrelated content from different sources that is 9 addressed to different destinations. For example, claims 14 and 28, which depend indirectly from claims 1 and 19, respectively, recite that the “combiner is configured to combine the digital information demodulated by the wireless demodulator unit with digital information received from at least one addressable device, and output the combined digital information as the outgoing digital information stream to the wideband distribution unit.” Ex. 1001, 14:14–19, 16:49–54. Thus, by their plain language, these claims contemplate that the digital information to be combined may be received from more than one addressable device, and remain agnostic regarding the relationship between the packets in a stream, or the ultimate destination of those packets. See Ex. 1020, 96:11–97:8 (testimony by Dr. Nettles that claims 13 and 14 of the ’822 patent refer to a “digital information stream” that may include packets from different devices, relating to different content, going to different destinations). The specification of the ’822 patent is likewise consistent with an understanding of the claim terms “digital stream” and “digital information stream” as being free from any requirement that the packets of the recited stream be differentiated from other packets by more than destination address. Aside from the claims themselves, the specification of the ’822 patent uses the term “digital stream” in only a single instance, to describe signal throughput (the specification nowhere uses the term “digital information stream”). Ex. 1001, 10:10–14. The specification explains that “the channel width can, for example, be increased from 6 MHz per channel to 12 MHz per channel in order to accommodate, for example, the” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “2. Other Claim Terms In the Decision on Institution, we concluded that the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” for which RPX proffered constructions in its Petition (Pet. 7– 9), did not require express construction, and should be given their plain and ordinary meaning. Dec. 6. Neither RPX nor ChanBond challenges our determination that the plain and ordinary meaning of each of these terms applies in the instant proceedings. Pet. Reply 1 (“RPX agrees with the Board that affording those terms their ordinary and customary meaning is appropriate for the purposes of these proceedings.”); PO Resp. 21 (“[T]he term ‘when’ requires only its ‘ordinary and customary meaning.’ . . . [T]he term ‘detector’ is used in accordance with its regular and customary meaning[.]”), 25 (“Insofar as this construction is consistent with the ‘ordinary and customary meaning’ of this term, Patent Owner agrees, however, it should not be limited unnecessarily by the cited examples from the specification referenced by Petitioner.”), 26 (“[T]he claim is plain in meaning as written, no further construction is necessary.”). Accordingly, we conclude that none of the claim terms “when,” “detector,” “additive signal,” and “channel identification information,” requires express construction, and afford each term its plain and ordinary meaning.” slip op. at 12

  • BurdenNot shown unpatentable

    “We find that the preponderance of the evidence does not support a conclusion that an artisan of ordinary skill would have had reason to combine the network gateway of Rakib with the protocols and formatting disclosed in DOCSIS 1.1.4. We are mindful that obviousness inquiry requires “an expansive and flexible approach.” KSR, 550 U.S. at 415. Such analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. It is axiomatic, however, that a determination of obviousness “cannot be sustained by mere conclusory statements; instead, there 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 18

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

    “RPX does not offer adequate explanation as to why a relevant skilled artisan would have sought to combine Rakib with DOCSIS 1.1.4, when Rakib is addressed to DOCSIS 1.2, and makes no mention of DOCSIS 1.1.4. Nor does RPX explain why an ordinarily skilled artisan would have understood Rakib’s references to “DOCSIS 1.2 compatible,” “DOCSIS modem,” or “DOCSIS data” as suggesting combination with DOCSIS 1.1.4. In this regard, we highlight that RPX does not present evidence sufficient to establish any relationship between the cited portions of DOCSIS 1.1.4 and DOCSIS 1.2, or otherwise demonstrate a rationale for combining Rakib with 20 DOCSIS 1.1.4. Rather, RPX relies solely on Mr. Koperda’s unsupported, conclusory testimony (in a footnote) that any differences between DOCSIS 1.1.4 and DOCSIS 1.2 are “not relevant to the downstream/upstream RF channel management” (Ex. 1002 ¶ 104 n.3); testimony to which we give little weight (37 C.F.R. § 42.65(a)).” slip op. at 20

  Patent outcomesUS 7,941,822 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,941,822
• Amazon.Com, Inc. / Blizzard Entertainment, Inc. v. Ac Technologies S.A.No claims unpatentable
  PTAB · Mar 6, 2017 · IPR2015-01801 · APJ Peter P Chen · IPR · Final written decision

  Claims 30, 31, 33, and 40–46 were not shown unpatentable because Rabinovich required prior client access before replication, and Carter did not cure that limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner’s declarant, Dr. Ratner, testifies that a person of ordinary skill in the art at the time of the alleged invention “would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience.” Ex. 1005 ¶ 17; Pet. 14. Patent Owner does not challenge this definition or present its own. Accordingly, we credit the testimony of Dr. Ratner regarding the level of ordinary skill in the art, and find that a person of ordinary skill in the art would have had an undergraduate degree in Computer Science or a related field, such as Electrical Engineering, and two to three years of experience working in the field, or an equivalent level of experience. This level of ordinary skill is reflected not only by the information presented by the parties, but also by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 9

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

    “We agree with and adopt Petitioner’s reasoning and determine Rabinovich to be a printed publication. We credit the unrebutted testimony of Dr. Rabinovich regarding the consistency of his professional practice in 1998 for republication of his AT&T technical memoranda on a webpage that he managed on AT&T’s publicly accessible website. Furthermore, we find the December 1998 IEEE article corroborates the public availability of Rabinovich on that website, and would have been a roadmap, for one of ordinary skill in the art of data management and optimized access to data, to be guided to Rabinovich. See Reply 21–22. As Petitioner points out, Patent Owner’s own declarant states that Rabinovich and the December 1988 IEEE article “are ‘similar[]’ in that they both address ‘problems in network connectivity caused by multiple clients accessing servers.’ (Ex. 2006 at 12).” Id. at 20. Additionally, the passage in the December 1998 IEEE article that cites to Rabinovich refers to an algorithm in Rabinovich for optimizing access to data in order to increase performance. Id. at 21. Accordingly, we find that footnote 16 of the IEEE article, which contains the URL to Rabinovich, would have guided one of ordinary skill directly to Rabinovich. We are, therefore, persuaded, that Rabinovich is a printed publication under 35 U.S.C. § 102.” slip op. at 12

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

    “whether to replicate data object xs. Rabinovich defines cnt(s,xs) as the “total access count for xs,” which is equal to cnt(xs). Ex. 1006, 11. According to Dr. Ratner, “[t]he metric cnt(s,xs) measures the total number of times in that window that replica xs has been served to a client computer.” Ex. 1005 ¶ 253. As Patent Owner points out, Rabinovich teaches replicating/migrating object xs only if the ratio of cnt(s,xs) over aff(xs) is greater than m, and the ratio can be greater than m only if cnt(s,xs) is greater than zero. PO Resp. 19; Ex. 1006, 12, Fig. 4. In view of this, we agree with Patent Owner that if cnt(s,xs) has a value of zero, meaning that object x has not been served to any client computer, then the ratio of cnt(s,xs) to aff(xs) will be zero, i.e., less than m, and Rabinovich will not carry out its replication or migration step. This means that Rabinovich will not replicate or migrate object xs until xs has been accessed by a client computer at least once, such that the access count for xs is greater than zero. In this regard, we agree with Patent Owner that object xs is not “sen[t], from the at least one data storage device to the another data storage device . . . independent of an access of the at least one client computer” because Rabinovich teaches explicitly that object xs is not sent unless there has been at least one access from the client computer.” slip op. at 18

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

    “30, for use with a computer game (claim 45) and with an interactive computer game accessed by at least two users (claim 46). Ex. 1001, 30:47– 54. In connection with its obviousness contentions, Petitioner makes no separate arguments why Rabinovich teaches or suggests shifting redundantly stored data based upon data transmission parameters between the servers independent of an access of the client. Pet. 45–47; Reply 17–18. Because claims 45 and 46 depend from claim 30, we find that Petitioner has failed to demonstrate by a preponderance of the evidence that Rabinovich teaches or suggests the limitations in these two dependent claims for the same reasons discussed above with respect to claim 30.” slip op. at 21

  Patent outcomesUS RE40,521 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham

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.