• Activision Blizzard, Inc. v. Milestone Entertainment, LLCAll claims unpatentable
  PTAB · Oct 8, 2026 · IPR2025-00711 · APJ Linda E Horner · IPR · Final written decision

  Claims 1, 2, 4–7, 9, 11–13, 15, 19, 23, 24, and 29 are unpatentable as obvious over Kelly, Kelly and Paulsen, or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “B. Level of Ordinary Skill in the Art There is no evidentiary dispute about the level of ordinary skill in the art.7 Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 12 (citing Ex. 1003 ¶¶ 100–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’164 patent Specification and the asserted prior art references, based on our review of the record.” slip op. at 10

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

    “Petitioner argues that it is not necessary for the Board to provide an express construction for any claim term because the Petition “establishes the prior art meets each claim limitation under any reasonable construction.” Pet. 13. Patent Owner similarly submits that “[t]he Board need not construe any terms at this stage, because under any reasonable construction of the claim terms, the prior art fails to disclose or suggest the claimed features.” Resp. 8–9. Patent Owner notes, however that “it has relied on the plain meaning of ‘frequency of play’ in Claim 7.” Id. at 9. We agree that no explicit claim construction is necessary for this decision because, even were we to adopt Patent Owner’s proffered plain meaning of “frequency of play,” Petitioner has demonstrated that the prior art renders obvious this claim limitation. To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context in which they are raised in our analysis below.” slip op. at 11

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

    “Patent Owner does not contest Petitioner’s showing that Kelly renders obvious the subject matter of claims 1, 2, 4–6, 11–13, 15, 19, 23, 24, and 29. Resp., passim; Tr. 50:4–13.8 We have reviewed Petitioner’s arguments and 8 Patent Owner argued in its Preliminary Response that Kelly does not disclose limitations [1.c.iii] and [1.c.v]. Prelim. Resp. 10–12. In our Institution Decision, we did not find these contentions persuasive based on the initial record. Dec. 20–24. Patent Owner has not presented these or any other arguments contesting Ground 1 as to claim 1 in its Response. Resp., the evidence and, based on that analysis, we find that Petitioner has shown by a preponderance of evidence that Kelly renders obvious the subject matter recited in these claims.” slip op. at 17

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

    “and Paulsen render obvious claims 2 and 4. Pet. 36–40. Petitioner submits that to the extent Kelly’s player account is not player’s club information or information on non-cash amounts, a person having ordinary skill in the art would have been motivated to implement these features based on the teachings of Paulsen. Id. Specifically, Petitioner asserts that Paulsen teaches player tracking cards and player tracking programs including player tracking points. Id. at 38–40 (citing Ex. 1007 ¶¶ 8, 9, 49). Petitioner argues that a person having ordinary skill in the art would have been led to add these features to Kelly’s system to provide a more detailed view of tracking play, which would allow for rewarding patronage and engagement. Id. at 36–37, 39–40 (citing Ex. 1003 ¶ 264; Ex. 1007 ¶ 10). Paulsen discloses a “gaming machine bonusing method utilizing a player tracking card.” Ex. 1007, code (54). Paulsen discloses that player tracking programs and player tracking cards were used in the art to provide rewards, or “comps,” to players based on the player’s level of patronage (e.g., to the player’s playing frequency and/or total amount of game plays at a given casino). Id. ¶ 8. These rewards were intended to maintain a player’s interest in additional game play during a visit and provide loyalty incentives to players. Id. at ¶ 9.” slip op. at 29

  Patent outcomesUS 11,335,164 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 11,335,164
• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• Axon Enterprise, Inc. / Dedrone Holdings, Inc. v. Airspace Defense, Inc.Other
  PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision

  Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.

  RulingsFinal written decision

  • 112 supportMotion to amend, deniedDenied

    “First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15

  • ScopeDecided for patent owner

    “not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable

    “572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23

  § 103 obviousness§ 112 disclosurecites Graham · Nautilus
  Patents in suitUS 10,713,959
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCAll claims unpatentable
  PTAB · May 5, 2025 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 9–15 are unpatentable as obvious: claims 9, 11 over Zellner and Kim; claim 15 over Walker; and claims 9–14 over Martin and Kim, with claim 14 also over Martin, Kim, and Dixit.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address, let alone dispute, Petitioner’s proposed level of skill in the art, which is consistent the problems, solutions, technology, and educational level set forth in the ’404 patent and the prior art references asserted by Petitioner. See generally PO Resp.; Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we apply Petitioner’s proposed level in this Decision.” slip op. at 10

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

    “Reviewing the written description, we find no lexicographical definition or disavowal related to “owner identification information” in the ’404 patent. Instead, we find the term mentioned in relation to embodiments and examples. See, e.g., Ex. 1001, code (57), 4:17–25. Claim 8 of the ’404 patent recites that “owner identification information includes a name and a description of the owner of the mobile device” but, as Petitioner notes, the doctrine of claim differentiation suggests the term as used in claim 1 should be construed more broadly. Paper 28, 2; Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (citing Ortho-McNeil Pharm. v. Mylan Lab'ys, Inc., 520 F.3d 1358, 1362 (Fed. Cir. 2008) (“[T]his court strives to reach a claim construction that does not render claim language in dependent claims meaningless.”)). Patent Owner is correct that “owner identification information” in claim 1 of the ’404 patent must be construed to encompass the name and description of the mobile device’s owner, as recited in claim 8. Paper 29, 2. However, we decline to restrict the term to exclude other indicia that may identify the device owner because that is not warranted by the written description, claims, and file history of the ’404 patent. Consequently, we construe “owner identification information” to mean “information that identifies the owner of the mobile device” under its ordinary and customary meaning as set forth in the ’404 patent and its file history. As recited in claim 8 of the ’404 patent, the term includes, but is not limited to, the name and description of the mobile device owner.” slip op. at 12

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

    “have been aware of the need to implement techniques to reduce risk of false activation of panic button devices, and Zellner expressly recognizes this problem. Pet. 43–44 (citing Ex. 1008, 13:40–42; Ex. 1002 ¶¶ 242, 244). Petitioner asserts that Kim’s technique of requiring the user to press its device’s emergency key button a plurality of times was a known way to reduce false activations. Id. at 44 (citing Ex. 1002 ¶ 245). Petitioner posits that a POSITA would have considered the combination of Zellner and Kim to amount to the use of a known technique to improve a similar device in the same way, as well as the application of a known technique to a known device ready for improvement to yield predictable results. Id. at 44–45 (citing Ex. 1002 ¶¶ 246–247). These are recognized rationales supporting a motivation to combine. KSR, 550 U.S. at 417. We agree with Petitioner that a POSITA would have been motivated to modify Zellner’s device to require multiple button presses as taught by Kim in order to reduce false activations. Petitioner further contends that a POSITA would have had a reasonable expectation of success in modifying Zellner’s panic button to require three presses for activation, and that examples of prior art showed how this could be done. Pet. 45 (citing Ex. 1002 ¶¶ 248–251). Since Kim expressly discloses implementation of this feature, we agree with Petitioner that a POSITA would have expected success in combining Zellner and Kim. Ex. 1008, 13:40–42.” slip op. at 37

  Patent outcomesUS 11,265,404 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Asetek Danmark A/S v. Coolit Systems, Inc.Adverse judgment
  PTAB · Sep 4, 2024 · IPR2020-00747 · APJ Scott C Moore · IPR · Adverse judgment

  The Board entered adverse judgment against Petitioner as to claims 1, 2, 3, 5, 7, and 25 after deeming it to have abandoned the contest.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “an Order to Show Cause directing Petitioner to file a paper showing cause why the Board should not enter adverse judgment against Petitioner for abandonment of the contest under § 42.73(b). Paper 46, 3–4. Our Order explicitly provided “if Petitioner does not file such a paper by August 5, 2024, Petitioner shall be deemed to have abandoned the contest under 37 C.F.R. § 42.73(b), and to thereby have requested adverse judgment against itself.” Id. at 4. Petitioner did not file any response. Thus, pursuant to 37 C.F.R. § 42.73(b) and the explicit terms of our July 30, 2024, Order, Petitioner is hereby deemed to have abandoned the contest and requested adverse judgment against itself. The Board, accordingly, enters adverse judgement against Petitioner as to all challenged claims.” slip op. at 3

  • RemandOther

    “This case is before us on remand from the Court of Appeals for the Federal Circuit. See CoolIT Sys., Inc. v. Vidal, No. 2022-1221, 2024 WL 981364 (Fed. Cir. Mar. 7, 2024). In our initial Final Written Decision, we found that all claims challenged by Asetek Danmark A/S (“Petitioner”) in U.S. Patent 9,057,567 B2 (the “’567 patent”) had been shown to be unpatentable. Paper 42. CoolIT Systems, Inc. (“Patent Owner”) appealed, and the Federal Circuit vacated our judgment and remanded the case to us for reconsideration under a revised construction of the claim term “matingly engaged.” CoolIT, 2024 WL 981364, at *6. Prior to the Federal Circuit’s decision, however, Petitioner “moved to voluntarily dismiss [its] cross-appeal and withdraw from the case upon privately settling its dispute” with Patent Owner. Id. at *3.” slip op. at 2

  None
  Patents in suitUS 9,057,567
• Apple Inc. v. Ald Social, LLCAdverse judgment
  PTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5

  None
  Patents in suitUS 9,402,158
• Apple Inc. v. Ald Social, LLCAdverse judgment
  PTAB · Jul 23, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board entered adverse judgment against ALD Social, LLC on claims 1–14 of the ’054 patent and terminated IPR2023-01398 after finding unequivocal abandonment.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5

  None
  Patents in suitUS 9,198,054
• Intuit Inc. v. Samesurf, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00342 · APJ Phillip A Bennett · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Lebrun and Wang and over Prajapat and Wang; the contingent motion to amend is denied.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “3. May Not Enlarge the Claim Scope An amendment may not seek to enlarge the scope of the claims of the” slip op. at 87

  • Strike new argumentDenied

    “comprise briefs filed by Petitioner in support of a motion to dismiss for lack of patent eligibility under 35 U.S.C. § 101 in the parallel district court litigation involving the challenged patents. The exhibits were submitted together with Patent Owner’s Sur-reply (Paper 33). We have not relied on Exhibit 2006 or Exhibit 2007 in our analysis. Accordingly, we deny the motion as moot.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “Accordingly, we deny Petitioner’s Motion to Exclude Exhibits 2005–” slip op. at 10

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

    “one of ordinary skill would have had a reasonable expectation of success in combining compatible embodiments, and we credit Dr. Lieberman’s testimony because he supports his testimony with a passage from Lebrun that is consistent with his conclusion. Id. (stating “Lebrun describes several ‘variations on the group-surfing session,’ which includes a subsection of ‘multiple group surfing channels.’ Ex. 1005, 37:19, 43:5 (emphasis in original).”). Consistent with Lebrun’s description, Dr. Lieberman opines, and we agree, that “[a] POSITA would understand ‘multiple group surfing channels’ would be one example/scenario of the ‘variations on the group-surfing session,’ and the latter encompasses the former and the two embodiments are compatible and combinable.” Ex. 1034 ¶ 18.” slip op. at 42

  Patent outcomesUS 8,527,591 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,527,591
• Intuit Inc. v. Samesurf, Inc.All claims unpatentable
  PTAB · Jun 25, 2024 · IPR2023-00339 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Lebrun and Wang; the Board did not reach the separate Prajapat and Wang challenge.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the parties, we found that a person of ordinary skill in the art (“POSITA”) “would have had (1) at least a bachelor’s degree in computer science, computer engineering, or electrical engineering, or a similar field, and (2) at least two years of work experience in software development and/or web-based software,” which reflected Petitioner’s proposal. Dec. 11–12; see Dec. 9–12 (discussing the respective proposals and level of ordinary skill reflected in the challenged patent and asserted prior art). Patent Owner accepts this level of ordinary skill in the art. PO Resp. 42. Accordingly, we apply this determination of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “information related to a shared web browsing interaction” is interchangeable with “web browsing interaction data” and, as a result, this portion of the specification should limit the claim term. PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). The quoted portion of Mr. Friedman’s testimony, however, addresses other terms in the specification and not “information related to a shared web browsing interaction.” PO Resp. 18–19 (quoting Ex. 2004 ¶ 40). As such, the testimony cited by Patent Owner does not support Patent Owner’s position. Accordingly, we determine that the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data” in the written description. c. Plain and Ordinary Meaning Because the patentee has not acted as a lexicographer to set forth a definition of “web browsing interaction data,” we look to the plain and ordinary meaning of the term. See Edwards Lifesciences LLC v. Cook Inc., from the ordinary meaning will be adopted “when the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history” (internal quotation marks omitted)); Pet. Reply 5 (Petitioner arguing that “web browsing interaction data” should be afforded its plain and ordinary meaning) (citing Ex. 1034 ¶ 13). Notably, both Dr. Lieberman and Mr. Friedman agree that the plain and ordinary meaning of “web browsing interaction data” is sufficient to inform how one of ordinary skill would have understood the term. Ex. 1034 ¶ 13 (Dr. Lieberman testifying: “The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions. No additional definition or limitation is required in my opinion, nor is there any special or specific meaning given to the term in the specification of the ’145 patent.”); Ex. 1033, 171:5–16 (Patent Owner’s expert, Mr. Friedman, testifying that “the plain and ordinary meaning is sufficient.”). According to Petitioner, the plain and ordinary meaning is “data related to web browsing interactions.” Pet. Reply 5 (citing Ex. 1034 ¶ 13); Ex. 1034 ¶ 13 (“The plain meaning of ‘web browsing interaction data’ is data related to web browsing interactions.”). Patent Owner’s expert declined to opine on what the plain and ordinary meaning of “web browsing interaction data” other than it excludes webpages and partially filled webpages related to a web browsing interaction. See Ex. 1033, 171:5–16. slip op. at 27

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

    “Accordingly, we conclude that the plain language of the claims does not require “web browsing interaction data” to be limited to data describing interaction performed on a website by a host device. We turn to the specification because the meaning of “web browsing interaction data” is informed “not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips, 415 F.3d at 1313. The written description does not provide a definition or clear meaning for “web browsing interaction data.” Patent Owner acknowledges the term is not expressly used in the written description. PO Resp. 17. Patent Owner, however, identifies “information related to a shared web browsing interaction” as a term that is interchangeable with “web browsing interaction data.” PO Resp. 18, 29. We recognize the specification term “information related to a shared web browsing interaction” is substantially similar10 to Petitioner’s proposed plain and ordinary meaning of “web browsing interaction data” as “data related to web browsing interactions.” 11 Patent Owner identifies three passages that each describe the present invention as receiving information related to a shared web browsing interaction performed by a host device and performing the shared web browsing interaction based on the received information. PO Resp. 17–18 (block quoting Ex. 1001, Abstract, 3:10–24). The identified passages, however, do not show intention to manifestly limit “web browsing interaction data” to data describing interactions” slip op. at 25

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

    “forth by Petitioner (Pet. 22–34) discloses or suggests all limitations recited by claim 1, we consider Petitioner’s conclusion that it would have been obvious to combine Lebrun and Wang in the manner proposed to arrive at the claimed invention. See Pet. 19–22. (i) Articulated Reasoning To demonstrate obviousness, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. Petitioner contends that one of ordinary skill would have been motivated to combine Wang’s activating a session invitation with Lebrun’s invitation to join a group-surfing session. Pet. 28. Specifically, Petitioner contends that “activating an invitation via a designated URL address would further enable” Lebrun’s group-surfing server “to coordinate and manage the group-surfing session, which would further Lebrun’s objective of providing an ‘improved technique for group access to web sites.’” Pet. 28 (citing Ex. 1005, 7:1). We agree with Petitioner that activating an invitation via a designated URL address would be a technique that helps coordinate a group-surfing session and would enable multiple related users being able to access “substantially the same” slip op. at 63

  Patent outcomesUS 9,185,145 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,185,145
• ZF North America, Inc. / ZF Active Safety US Inc. v. Stoneridge Control Devices, Inc.All claims unpatentable
  PTAB · Jun 12, 2024 · IPR2023-00273 · APJ Scott C Moore · IPR · Final written decision

  Claims 5, 7, 8, 14–19, 24, and 25 are unpatentable under §103 over the grounds decided; the motion to exclude was denied in part and dismissed in part.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Both parties agree that one skilled in the relevant art would have had a bachelor’s degree in a relevant engineering discipline, plus at least two years of experience with what each believes to be the relevant technology. Though Patent Owner objects to explicitly listing a bachelor’s degree in electrical engineering as a qualifying educational background, its proposed formulation includes open-ended language (i.e., “or a similar discipline”) that is broad enough to encompass electrical engineering degrees. Patent Owner also concedes that Dr. Lequesne, who has a bachelor’s degree in electrical engineering, is qualified to give testimony from the perspective of one of ordinary skill in the art. See Hrg. Tr. 36:9–21. Accordingly, it does not appear that there is a substantive dispute regarding the educational requirements that is relevant to this proceeding. As to the necessary experience, Petitioner correctly points out that “most” claims of the ’415 Patent do not recite isolators or require attenuation or damping. Pet. Reply 23. However, the challenged independent claims (claims 5, 8, 16, and 17) all recite at least an isolator with a damping coefficient, and the ’415 Patent repeatedly mentions noise attenuation as being a goal of the claimed invention. See, e.g., Ex. 1001, 1:53–55, 5:33– 56. Patent Owner’s proposal also uses the disjunctive “or,” and thus is broad one or more of vibration isolation, vibration damping, or noise attenuation. On this record, we adopt Patent Owner’s proposal, and determine that one of ordinary skill in the art to which the ’415 Patent pertains would have had a bachelor’s degree (or equivalent) in mechanical engineering, automotive engineering, or a similar discipline, and at least two years of experience with vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems. We find that this formulation is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355. We note, however, that none of the issues in this case appears to turn on differences between the parties’ proposed formulations, and that all of the findings and conclusions set forth below would have remained the same had we instead adopted Petitioner’s proposed formulation. C.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “We begin our analysis of this dispute by looking at the language of the claims themselves. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). In so doing, we note that Patent Owner is correct in asserting that certain claims recite a vibration isolator disposed between a sub-frame and an actuator housing. See Ex. 1001, Claims 16, 17; PO Resp. 17. Other challenged claims, however, do not contain any limitations that pertain to an actuator housing. See Ex. 1001, claims 5, 7, 8. Patent Owner’s proposed construction, thus, would incorporate new limitations pertaining to an actuator housing into at least claims 5, 7, and 8. Next, we turn to the specification. See Vitronics, 90 F.3d at 1582. In so doing, we note that it is generally improper to incorporate limitations from the specification into the claims because 35 U.S.C. § 112 “requires that the claims themselves set forth the limits of the patent grant, [and] also definitions of terms to the exact representations depicted in the embodiments.” Phillips, 415 F.3d at 1323. There are, of course, exceptions. A specification may contain a “special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Akamai Techs., Inc. v. Limelight Networks, Inc., 805 F.3d 1368, 1375 (Fed. Cir. 2015). But any such special definition must “clearly redefine a claim term ‘so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.’” Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000) (quoting Process Control Corp. v. Hydreclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999)). The specification also may “reveal an intentional disclaimer, or disavowal of claim scope by the inventor.” Phillips, 415. F.3d at 1316. But any such disclaimer “must be clear.” Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357 (Fed. Cir. 2006). Patent Owner is correct in its assertion that the specific embodiments disclosed in the ’415 Patent specification have separate sub-frames and actuator housings. See PO Resp. 16–17 (citing Ex. 1001, 4:44–54, 6:36–54). But the specification also makes clear that the applicant intended for these embodiments not to be construed as limiting the scope of the claims. See Ex. 1001, 8:36–42 (clarifying that the disclosed embodiments “are set forth here by way of illustration but not of limitation”). Patent Owner identifies nothing in the specification that rises to level of a definition or clear and intentional disclaimer or disavowal of claim scope, and we see no such definition or disclaimer in the specification. Patent Owner’s reliance on In re Smith Int’l, Inc., 871 F.3d 1375 (Fed. Cir. 2017), is also misplaced. In re broadest reasonable interpretation standard—a standard that does not apply in this case. See id. at 1381–82. Moreover, the claim construction at issue in Smith was so broad that the Federal Circuit characterized it as “generic.” See id. at 1382. Here, the parties agree that the claim term sub-frame has a specific meaning: a frame for a sub-assembly. See PO Resp. 16; Pet. Reply 13; Hrg. Tr. 13:7–12. Nothing in Smith requires or suggests that under the Phillips standard, we must interpret the non-generic claim term “sub-frame” in a way that would incorporate new limitations pertaining to an actuator housing into claims that do not even mention an actuator housing.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We decline to find Dr. Lequesne less credible based solely on his electrical engineering degree and relative level of experience with noise vibration and damping. As noted above, Patent Owner does not dispute that Dr. Lequesne is qualified to give testimony from the perspective of one of ordinary skill in the art. Petitioner asserts, and Patent Owner does not dispute, that “Dr. Lequesne has spent his 40-year career as a designer in the automotive industry, has worked on EPBA [electronic parking brake actuators and NVH [noise, vibration, and harshness].” Pet. Reply 24 (citing Ex. 1002 ¶¶ 7–9; Ex. 2007, 10:6–17, 11:21–16:3, 20:3–31:8; Ex. 1023). On this record, we find Dr. Lequesne qualified to provide expert testimony on the subject matter of the challenged claims of the ’415 Patent and asserted prior art references because he has a degree in electrical engineering, which is a “similar discipline,” and at least two years of experience with “vibration isolation, vibration damping, or noise attenuation in the context of mechanical or electromechanical systems.” See supra § III.B; Ex. 1002 ¶¶ 4–12 (outlining Dr. Lequesne’s education and experience); Hrg. Tr. 36:9– 21 (Patent Owner’s counsel conceding that Dr. Lequesne is qualified to provide expert testimony). In judging the credibility of competing witnesses, we have weighed their testimony, taking into account the witnesses’ different educational qualifications and experiential backgrounds as they pertain to the ’415 Patent, as well as whether the witnesses offer corroboration for their opinions, and whether those opinions are consistent with the ’415 Patent, the prior art, and their cross-examination testimony. E.” slip op. at 14

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

    “We agree with Petitioner that Patent Owner’s purported evidence of copying, industry praise, and commercial success lacks nexus to the claimed invention. To show that the accused devices at issue, i.e., the purportedly copied, praised, and commercially successful products sold be Petitioner, are coextensive with at least one independent claim of the ’415 Patent, Patent Owner relies on the claim charts shown in Exhibit 2016. PO Resp. 62; Ex. 2005 ¶¶ 163–166. Patent Owner identifies those charts as “Exhibits A and B from Patent Owner’s Infringement Contentions, served in Stoneridge Control Devices, Inc. v. ZF North America, Inc. et al., U.S. District Court for the Eastern District of Michigan, Case No. 2:22cv10289.” Id. at viii. As such, the claim charts are apparently attorney argument summarizing Patent Owner’s allegations in the district court, not substantive evidence. See Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Patent Owner’s attempt to challenged claims also constitutes an improper incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”); PTAB Consolidated Trial Practice Guide 35–36; Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 8–10 (PTAB Aug. 29, 2014) (informative). Moreover, Dr. Stein’s declaration lacks any explanation or analysis to support his belief that “there is a component in each of the photographed products” in the claim charts “that corresponds to each one of the claim elements,” his “overall agreement with the positions taken in the claim charts,” or his “understand[ing]” that the accused devices “in Ex. 2016 are co-extensive in scope with the ’415 Patent.” Ex. 2005 ¶¶ 163, 166. Dr. Stein’s declaration merely repeats, in conclusory fashion, that there is a nexus between the accused devices and the claimed invention, and is thus insufficient to establish a nexus. See Bosch Auto. Serv. Sol., LLC v. Matal, 878 F.3d 1027, 1037 (Fed. Cir. 2017) (“As the Board recognized, however, the Pierce declaration lacks any explanation or analysis to support his asserted ‘understand[ing]’ that these commercial reset tools are covered by, or coextensive with, the claims of the ’796 patent. The Board permissibly concluded that this conclusory testimony lacks foundation.”); In re Cree, Inc., 818 F.3d 694, 703–04 (Fed. Cir. 2016) (“We agree with the Board that Dr. Brandes’ declaration merely repeats, in conclusory fashion, that there is a nexus between the success of white LEDs and the claimed invention.”). Patent Owner has thus failed to make a sufficient showing to establish a presumption of nexus. its secondary considerations evidence is a direct result of the unique characteristics of the claimed invention. For the reasons explained above, we conclude that Patent Owner’s evidence purportedly showing copying, industry praise, and commercial success is entitled to little weight in our obviousness analysis because Patent Owner has not shown a sufficient nexus between the evidence presented and the invention claimed in any of the challenged claims. F.” slip op. at 17

  Patent outcomesUS 7,021,415 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,021,415

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.