• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

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

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. 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. 14 (citing Ex. 1003 ¶¶ 62–65). 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 ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

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

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

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

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Cambridge Industries USA, Inc. / Accelight Technologies, Inc. v. Applied Optoelectronics, Inc.No claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-01570 · APJ Monica S Ullagaddi · IPR · Final written decision

  The majority held claims 1–19 not shown unpatentable: Wang did not anticipate claims 1–10, and Wang with Xiong did not render claims 11–19 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “field of the ’690 Patent would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 14 (citing Ex. 1003 ¶ 22). Petitioner also states that “[i]ndividuals having different educational backgrounds and supplemental experience might still be of ordinary skill in the art if such experience compensates for any deficiencies in education relative to the criteria stated above” and “[i]n some cases, additional education might be an acceptable substitute for some experience, or vice versa.” Id. Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art. See e.g., PO Resp. 9. We adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’690 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Patent is self-explanatory and would have been recognized by a [person of ordinary skill in the art] as having plain and ordinary meanings.” Pet. 10. “Petitioner submits that no special constructions are required” because “the claim terms appear understandable in the context of the disclosure provided by the specification of the ’690 Patent.” Id. (citing Ex. 1003 ¶ 58). Patent Owner “agrees that the claim terms should be given their plain and ordinary meaning as understood by a [person of ordinary skill in the art].” PO Resp. 10. After reviewing the arguments and evidence before us, we determine that we do not need to expressly construe any claim term to resolve any controversy in the proceeding. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • BurdenNot shown unpatentable

    “Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard. For the foregoing reasons, we are not persuaded that Petitioner sufficiently establishes that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Wang by a preponderance of the evidence.” slip op. at 13

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

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard.” slip op. at 12

  Patent outcomesUS 10,788,690 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,788,690
• Cambridge Industries USA, Inc. / Accelight Technologies, Inc. v. Applied Optoelectronics, Inc.No claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00437 · APJ Monica S Ullagaddi · IPR · Final written decision

  The majority held claims 1–19 not unpatentable: Wang did not establish anticipation of claims 1–10, and Wang with Xiong did not establish obviousness of claims 11–19.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard.” slip op. at 12

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

    “Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard. For the foregoing reasons, we are not persuaded that Petitioner” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “challenge set forth in the Petition by citing the background of the ’690 patent and Dr. Willner’s deposition testimony and characterizing the same as “admissions” of Patent Owner in Petitioner’s Reply, such “evidence” did not form the basis of Appellant’s original position set forth in the Petition.6 Petitioner’s arguments that all of the components recited in claim 11 “were known in the prior art” or that Dr. Willner admitted the same are unpersuasive at least because the Petition did not set forth this position. Contrary to Petitioner’s arguments during the oral hearing, the Petition does not present challenges based on “Applicant Admitted Prior Art.” See generally Pet.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “field of the ’690 Patent would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 14 (citing Ex. 1003 ¶ 22). Petitioner also states that “[i]ndividuals having different educational backgrounds and supplemental experience might still be of ordinary skill in the art if such experience compensates for any deficiencies in education relative to the criteria stated above” and “[i]n some cases, additional education might be an acceptable substitute for some experience, or vice versa.” Id. Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art. See e.g., PO Resp. 9. We adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’690 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

  Patent outcomesUS 10,788,690 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,788,690
• Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00253 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–10 were not shown unpatentable under either § 103 ground because the evidence did not establish a reason to combine the references or a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent. D.I. 8. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’035 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition. C.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In our Institution Decision, we construed the claim term “string separator character” to mean “a single-character string separator,” and invited the parties to raise any issues they had with this construction in future briefing. D.I. 10. Patent Owner subsequently indicated that it agreed with this construction. See PO Resp. 8. Petitioner did not raise any objections to this construction (see generally Pet. Reply). Accordingly, and in the absence of any dispute, we construe “string separator character” to mean “a single-character string separator.” Neither Petitioner nor Patent Owner ask us to adopt explicit constructions of any other claim terms. See Pet. 14, PO Resp. 8–9; Pet. Reply 1–23; PO Sur-reply 2–7. We also find that the issues in dispute can be resolved without construing any other claim terms. Accordingly, we do not adopt explicit constructions of any other claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms … that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). D.” slip op. at 12

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

    “search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” See PO Resp. 26–27. Indeed, Petitioner has given little or no explanation of how one of ordinary skill in the art allegedly would have taken the “idea of incremental search” and applied it to Lotus Notes. See, e.g., Ex. 2021, 116:20–117:17 (Petitioner’s declarant, Dr. Terveen, testifying that “Raskin is not explicitly talking about searching across a set of documents, but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin simply does not teach a mode of incremental searching that applies to the query-style, document-finding searching of the type Petitioner cites from Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Mr. Haeberli contrasting the Lotus Notes searches cited by Petitioner with Raskin’s searches). Raskin even states that it is “difficult or impossible to implement incremental searches” using interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Mr. Haeberli’s testimony that this passage of Raskin “directly undermines Dr. Terveen’s suggestion that a POSITA would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 24

  Patent outcomesUS 7,370,035 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,370,035
• Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00254 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1–20 were not shown unpatentable under either §103 ground because Petitioner failed to establish motivation to combine and a reasonable expectation of success.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence then of record, including the asserted prior art and the ’490 patent. Dec. 9. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’490 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 9

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

    “In our Decision on Institution, the only term that we found it necessary to construe was the term “string separator character” in claim 1. We preliminarily construed this term to mean “a single-character string separator.” Dec. 11, 30–31. We invited the parties to address the appropriateness of this construction over the course of the trial. Id. at 11, 31. In its briefing, Patent Owner agrees with the Board’s preliminary construction, arguing that it is “consistent with the intrinsic evidence.” PO Resp. 8 (citing Ex. 1001, claims 8 and 20). Patent Owner further argues that a person of ordinary skill would have understood a multi-character Boolean operator such as “AND” to be “a search syntax instruction rather than a string separator.” Id. at 9 (citing Ex. 1059, 162; Ex. 2001 ¶ 112). Petitioner’s Reply Brief does not address the issue of claim construction. See generally Reply Br.; see also Pet. 11 (“Unless otherwise noted, Petitioner applies the plain and ordinary meaning of all claim terms below.”). Following our review of the full record, we determine that it is not necessary to construe this or any other claim term for the purposes of this Decision.2 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.). In our analysis below, we interpret the language of the claims according to its plain and ordinary meaning.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Having reviewed the evidence of record, we find Mr. Haeberli’s testimony to be more persuasive and better supported by the evidence. According to Dr. Terveen, “[r]obust programming languages such as C and C++, together with well-developed operating system and UI frameworks, . . . allowed an ordinary programmer to build a UI that supported incremental searching, as evidenced by the numerous prior art systems that implemented such functionality, including Entourage, Eudora, Emacs, Canon Cat, SwyftWare, and others. Ex. 1100 ¶ 43 (citing Ex. 1004, 8–9, 161; Ex. 1021, 125, 127, 129; Ex. 1039, 102–103; Ex. 1043, 385–389). The relevant question, though, is not whether it would have been possible to build a user interface that supported incremental search, but whether it would have been “simple and straightforward” to execute an incremental search of multiple partial search strings on large, indexed multi-file databases such as those described in the Lotus Notes references, as Dr. Terveen alleges. None of the prior art discussed in the “State of the Art” section of Dr. Terveen’s initial declaration, taken individually or together, discloses incrementally searching a plurality of files using two partial search strings. See Ex. 1003 ¶¶ 32–33, 37, 40; Ex. 2001 ¶ 100. Thus, creating a user interface might be “simple,” but the evidence suggests that the back-end execution of an incremental search is not. See, e.g., Ex. 1021, 126 (Raskin, concluding that “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches”).” slip op. at 23

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

    “different approach from that taken in Lotus Notes. The difference between Raskin’s sequential scanning method and the index-based system described in Wilcox is that sequential scanning by definition can only scan one document at a time as each document is loaded into a “buffer.” See, e.g., Ex. 2020 ¶ 35. Lotus Notes, however, only needs to load the index into memory for a user to be able to locate the single index entry identifying all instances of an indexed term across all indexed files. In fact, Raskin acknowledges that indexing may be necessary to maintain an acceptable response time. Ex. 1021, 132 n.10; see also id. at 129 (indexing speeds search times). Mr. Haeberli’s third and final reason for concluding that one of ordinary skill would not have been motivated to combine Raskin’s incremental search with Lotus Notes is that at the time using incremental searches would have presented “extreme technical difficulties.” Ex. 2001 ¶ 101. Here again we find Mr. Haeberli’s explanation more persuasive than Dr. Terveen’s opinion that combining the teachings from Raskin with Lotus Notes’ teachings “would have required only simple and straightforward software modifications.” Ex. 1003 ¶ 80. According to Mr. Haeberli, “there are serious technical challenges with implementing the complex search strategies of the challenged claims in the systems on which Dr. Terveen relies.” Id. ¶ 96. As Patent Owner argues: searching across a set of files to find specific files requires the system to identify which files are in the set, access those files (which are often not loaded in active memory), search their contents, determine which files contain matches to search criteria, and then present results to the user; all tasks that do not exist in the same way (or at all) for a search confined to text in a single open file already loaded into memory. Sur-Reply 9; see Ex. 2020 ¶¶ 15, 35–36. There would have been other challenges as well. For example, “[t]he type of sequential scanning typically employed to search a single open document is very time and resource intensive if employed to search a large set of documents.” Ex. 2020 ¶ 15. Also, “[i]mplementing incremental search in the Lotus Notes indexed system would necessarily require a larger index, which would slow down, rather than increase the search speed.” PO Resp. 23; see Ex. 2020 ¶ 33. Finally, Raskin itself concludes that “even if incremental searching is advantageous, ‘almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.’” Ex. 2001 ¶ 96 (emphasis added by Mr. Haeberli) (quoting Ex. 1021, 126). In short, Mr. Haeberli presents three significant reasons why there would have been no motivation or expectation of success in combining the teachings of Wilcox with those of Raskin. Dr. Terveen’s opinion to the contrary, on the other hand, is not supported by evidence. Dr. Terveen testifies that “[a] POSITA would have been motivated to perform Lotus Notes’ multi-string search incrementally for the reasons stated by Raskin: speed, effectiveness, and ease of use.” Ex. 1003 ¶ 78 (citing Ex. 1021 ¶¶ 125–127). The evidence, however, not only fails to support Dr. Terveen’s testimony, but also demonstrates that one attempting to make the proposed combination would not have reasonably expected the proposed combination to result in greater speed or effectiveness.” slip op. at 27

  Patent outcomesUS 10,552,490 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,552,490
• Microsoft Corp. v. X1 Discovery, Inc.No claims unpatentable
  PTAB · Jun 18, 2026 · IPR2025-00255 · APJ William V Saindon · IPR · Final written decision

  Claims 1–27 were not shown unpatentable under either §103 ground because Petitioner did not establish a persuasive reason to combine the cited teachings with adequate factual support.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner does not comment on Petitioner’s formulation of the level of ordinary skill, or offer its own formulation in its Response. Patent Owner’s declarant, however, states: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that [Petitioner] has provided its own definition . . . . 31. I believe [Petitioner’s] definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Patent Owner’s formulation, finding it to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent. Dec. on Inst. 8. Following a review of the full record, we agree that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Patent Owner’s for the purposes of this proceeding. We continue to view Patent Owner’s proposed definition as consistent with the ’139 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “Petitioner does not assert any explicit claim constructions. Pet. 12. In our Decision on Institution, the Board construed “string separator character” as “a single-character string separator.” Dec. on Inst. 10, 28–29. Patent Owner explicitly agreed with this construction in its Response (Resp. 8–9), and Petitioner offered no further comment in its Reply. Although no claim construction issue is squarely before us now, we maintain our prior construction of “string separator character,” and do not construe any further limitations. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11

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

    “We agree with Patent Owner that a problem with Petitioner’s combination is that it proposes to take the idea of incremental searching from Raskin and divorce it from Raskin’s teaching of incremental searching. See PO Resp. 20 (arguing, “a [person of ordinary skill in the art] must consider all the teachings of a reference, and not pick out general ‘concepts’ disclosed in the art without considering the context in which they are used”); see also id. at 17–28 (setting out the whole argument); Ex. 2020 ¶¶ 39–62 (Patent Owner’s declarant explaining why Petitioner’s approach is “technically problematic”). Raskin’s incremental search is tied to finding and moving to character strings within a document. Ex. 1021, 125. For example, if a user were to type a string that was found in the text, “the instance [of that string] is selected and the cursor placed immediately after the end of the selection.” Id. The cursor can move about the text as characters of the search string are added or deleted. Id. at 125–126. Thus, Raskin discloses in-text search, even when searching across documents. Id. at 132 (“After the local document has been completely searched the search then proceeds through the following documents until the end of the folder is reached, when the search continues from the beginning of the first document in the folder until the current, already searched document is reached. After cycling through the folder, the next larger domain is treated similarly, and so forth.”). Raskin even distinguishes its text-finding search from Lotus Notes’ document-finding search, stating that “[i]t is usually easy to tell in what domain you are searching, because you see the results in context; what you see is not just a list of file names, as with many present search systems.” Id. (emphasis added); see also PO Sur-reply 16 (citing the same page and arguing that “Raskin recommends doing the opposite of what is claimed”). This context gives credence to Patent Owner’s argument that “the search functionalities disclosed in the Lotus Notes References and Raskin are materially different in such a way as to render combining them anything but simple and straightforward.” PO Resp. 26–27. Indeed, Petitioner has given little-to-no explanation of how one takes the “idea of incremental search” and applies it to Lotus Notes. Ex. 2021, 116:20–117:17 (Petitioner’s declarant testifying that “Raskin is not explicitly talking about searching across a set of documents [at once], but the teaching that I relied on in general from Raskin is the idea of incremental searching,” and “I did not have to talk about implementation level details or incorporating a particular implementation. That wasn’t necessary for my opinion.”). Raskin does not teach a mode of incremental searching that applies to the query-style, document-finding searching in Lotus Notes. See generally Ex. 1021; see also Ex. 2020 ¶¶ 34–35 (Patent Owner’s declarant contrasting Lotus Notes and Raskin). Raskin even states that it is “difficult or impossible to implement incremental searches” using standard interface-building tools. Ex. 1021, 126; Ex. 2020 ¶ 60 (Patent Owner’s declarant stating that this passage “directly undermines [Petitioner’s declarant’s] suggestion that a [person of ordinary skill in the art] would have been motivated to implement Raskin’s incremental search approach in the Lotus Notes system”).” slip op. at 34

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

    “Entourage and what True is doing and how it is doing it, Petitioner asserts that it would have been obvious to use True’s two search strings “to provide more targeted searching, as was common sense and well known in the art.” Pet. 60 (citing Pet. 8–9; Ex. 1057, 27); see also id. at 56, 66 (similar). But we are not persuaded by a preponderance of the evidence that True provides more targeted searching or better search results when finding documents. True itself appears silent on the issue. Petitioner cites Exhibit 1057, but all that stands for is the general premise that doing a Boolean AND search in a Web search engine reduces the number of search results. Ex. 1057, 27. Petitioner does not allege that True uses a Boolean AND search of the kind discussed in Exhibit 1057. Thus, the statement in Exhibit 1057 regarding reducing the number of search results is tied to a manner of performing Boolean searches, something Petitioner does not use to modify Entourage. In other words, Exhibit 1057 is of little relevance to the Entourage-True combination, and does not serve as a factual underpinning in support of Petitioner’s reasoning. Petitioner also cites to several other references that discuss Boolean-style searches, but these generic background disclosures do not explain why a person of ordinary skill in the art would have considered it obvious to use one or more features of the probabilistic-based interest level search from True in a document-finding application like Entourage. See Pet. 8–9 (string citing over a dozen references with no pinpoint citations). Accordingly, there appears to be little reason, absent hindsight, to incorporate some aspect of a text-as-proxy-for-sounds system like True into Entourage’s filter or Find feature to provide more targeted searching. Accord Ex. 2020 ¶ 120 (“Patent Owner’s declarant stating that “a [person of ordinary skill in the art] working on the problem of searching large document collections would not look to [True,] a system designed for navigating imprecise transcriptions of single audio files, as the technical approaches and constraints are entirely different”). Patent Owner argues, and we agree, that another problem with Petitioner’s combination is that True does not appear to actually provide more targeted or better searching. PO Resp. 59–60 (“True’s search capabilities are inherently imprecise”) (citing Ex. 1009, 1:18–27; Ex. 2001 ¶ 137); see also Ex. 1009, 4:31–37 (explaining that True uses a speech recognition system that calculates confidence levels based on a “% likelihood that [a word] corresponds to the portion of the digitized audio [at a given time]”); Ex. 2020 ¶ 114 (Patent Owner’s declarant stating that “the purpose of True is not to definitively locate where a search string actually appears”). Petitioner does not explain what about True would make some aspect of Entourage’s filter or Find features more targeted. Even if it was known to use Boolean AND searches, for example, Petitioner is not citing True to modify Entourage to have a Boolean search. True uses an “interest level” search instead, which is more inclusive than a Boolean AND search (it adds together hits for “queen” OR “mother,” and may return hits containing neither). Ex. 1009, 5:29–50, Fig. 2 (showing results list 22 having several results which do not indicate any of the searched-for words); see Ex. 2020 ¶ 116 (Patent Owner’s declarant analyzing True’s interest level search would also include “text [that] does not show the query word”). Petitioner does not appear to be proposing to incorporate an interest level search or a Boolean-style search into the filter or Find features, and we are not persuaded that True in fact provides more targeted searching. Even if the quality of the transcripts in True happened to be perfect (see Pet. Reply 10, arguing that “True describes searching a text file that has 100% accuracy”), the fact remains that True attempts to find text in particular time windows using an interest level search based on the probability that a word or words were spoken in a given time window, which is completely different from what Entourage is doing with its search (see Ex. 2020 ¶¶ 114–116, 121). In its Reply, Petitioner states that True teaches “an incremental search for multiple search strings entered in a search field.” Pet. Reply. 10. This is a broad generalization of what True does, made with the benefit of hindsight, but as we have just explained, True’s interest level search is different from the kinds of searches done in Entourage or even the Boolean-style web searches performed in the background references. See, e.g., Ex. 1057, 27. This means it is not a matter of taking one known teaching and simply applying it to another system. True is doing something different, and it’s not clear how True’s search would actually provide “precise, targeted search results” (Pet. Reply 3) given that True appears to suggest a less-targeted search than claimed (see, e.g., Ex. 1001, 29:62–63, claiming “identifying one or more documents included in both the first one or more documents and the second one or more documents”). See also Ex. 2001 ¶¶ 135 (Patent Owner’s declarant stating that “Entourage and True are directed to completely different purposes”), 136–138 (further analysis); Ex. 2020 ¶ 114 (stating that “the purpose of True is not to definitively locate where a search string actually appears”), ¶ 116 (stating that True returns text that does not even have the search word). True does not teach, suggest, or support Petitioner’s general premise that there is a benefit for an incremental search for multiple search strings entered in a search field or that such searches would provide precise, targeted search results. The problem with Petitioner’s analysis becomes more apparent when the Petition turns to the “string separator character” of claim 1. Notably, it is the claimed string separator character that converts a field with a single search string into a field with two search strings. See, e.g., Ex. 1098, 37:12– 41–4 (deposition of Patent Owner’s declarant) (discussing that a string separator character is what instructs the computer to break up one string of characters into separate strings of characters). Thus, one cannot discuss the string separator character apart from the limitations requiring first and second search strings in a single search field. Nevertheless, Petitioner treats the “string separator character” in isolation. See Pet. 61–62. Petitioner’s reason for modifying one or both of Entourage’s filter and/or Find feature(s) to have a string separator character is because “it was common to [use string separator characters].” Id. at 61. However, even if something was known, it does not mean it is obvious to incorporate it into one or both of these features in Entourage. KSR, 550 U.S. at 418 (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”). Adding a string separator character to divide a single string into two separately searched strings changes how the software would function. See Ex. 1098, 39:22–40:8 (Patent Owner’s declarant testifying that software has to look for a string separator character in order to know multiple search strings were entered in the field). The space character in “Orson Welles,” used in the Advanced Find example in Barber, for example, is not a string separator character because one looking to exclude hits with “Orson Welles” is searching for the string “Orson Welles”—the space is another character in the name string whose inclusion serves a specific semantic purpose (delineating between a first and last name). See Ex. 2001 ¶ 151 (“there is no evidence that when a user types ‘Orson Welles’ into this Find command text box that a search is performed on ‘Orson’ and ‘Welles’ separately as opposed to searching on the full text string ‘Orson Welles.’”); Ex. 1006, 387 (discussing how exclude the specific person “Orson Welles” from the search, not to find someone having the first name “Orson” or the last name “Welles”); see also Ex. 1003 ¶ 144 (Petitioner’s declarant implicitly acknowledging that the space in “Orson Welles” is not a string separator character). Thus, the space character in “Orson Welles” does not signal to the computer to break the string up into two parts at the space and perform” slip op. at 42

  Patent outcomesUS 9,633,139 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,633,139
• Cradlepoint, Inc. / Honeywell International, Inc. et al. v. Sisvel S.P.A.No claims unpatentable
  PTAB · Sep 29, 2025 · IPR2021-00580 · APJ Monica S Ullagaddi · IPR · Remand

  On remand, the Board held claims 1–10 not shown unpatentable under the Sachs anticipation and obviousness grounds because Sachs did not disclose the required timer stopping, and the new theories were not considered.

  RulingsRemand decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Whether Mr. Bates is a Person of Ordinary Skill in the Art In the Final Written Decision, we adopted Petitioner’s definition because “there does not appear to be a dispute that needs to be resolved.” FWD 8. Here, where Mr. Bates’ qualifications are challenged, we have reviewed the complete record including the parties’ arguments on remand and we find that Mr. Bates does not meet the requirements for a person of ordinary skill in the art according to Petitioner’s definition for level of ordinary skill in the art, which we adopted (see FWD 8). Notably, the panel adopted Petitioner’s definition of the level of ordinary skill in the Institution Decision (Paper 16, 8), and neither party challenged that determination during the trial, although Patent Owner did offer its own definition (PO Resp. 9). Mr. Bates has one degree: “a bachelor’s degree in Business Management.” Ex. 2001 ¶ 7. A degree in Business Management is not “a degree in electrical engineering or a similar discipline.” Pet. 35 (emphasis added). Accordingly, we disregard the testimony of Mr. Bates in rendering our findings and conclusions in this Decision. We note that, even if we did consider Mr. Bates’s testimony, the findings and conclusions rendered in this Decision would not change.” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “cover for his lack of education.” Pet. Remand Br. 4. Patent Owner disagrees and argues, inter alia, that “Mr. Bates was a pioneer in the cellular telecommunications field with more than five decades of practical and teaching experience.” PO Remand Resp. 5 (citing Ex. 2001 ¶¶ 8–23) (emphasis omitted); see id. at 3–4, 6. Whether Mr. Bates is a Person of Ordinary Skill in the Art In the Final Written Decision, we adopted Petitioner’s definition because “there does not appear to be a dispute that needs to be resolved.” FWD 8. Here, where Mr. Bates’ qualifications are challenged, we have reviewed the complete record including the parties’ arguments on remand and we find that Mr. Bates does not meet the requirements for a person of ordinary skill in the art according to Petitioner’s definition for level of ordinary skill in the art, which we adopted (see FWD 8). Notably, the panel adopted Petitioner’s definition of the level of ordinary skill in the Institution Decision (Paper 16, 8), and neither party challenged that determination during the trial, although Patent Owner did offer its own definition (PO Resp. 9). Mr. Bates has one degree: “a bachelor’s degree in Business Management.” Ex. 2001 ¶ 7. A degree in Business Management is not “a degree in electrical engineering or a similar discipline.” Pet. 35 (emphasis added). Accordingly, we disregard the testimony of Mr. Bates in rendering our findings and conclusions in this Decision. We note that, even if we did consider Mr. Bates’s testimony, the findings and conclusions rendered in this Decision would not change.” slip op. at 12

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

    “C. Claim Construction The Federal Circuit determined that “the plain and unambiguous language of claim 1 requires that a method, to come within the claim, must perform both limitations 1[c] and 1[d] where their preconditions apply.” Sierra Wireless, 130 F.4th at 1022. We interpret the claims and analyze Petitioner’s unpatentability arguments under the Federal Circuit’s determination.” slip op. at 13

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Petitioner was on notice, when Patent Owner’s Response was filed at the latest, that claim 1 could be construed as unconditionally requiring both limitations 1[c] and 1[d]. Indeed, Petitioner contended that it had shown both limitations “in single references.” Pet. Reply 5. Petitioner now seeks to shift its unpatentability contentions for limitation 1[c] from Figure 5 of Sachs to Figures 6 and 7. Petitioner’s new reliance on Figures 6 and 7 of Sachs is “a meaningfully distinct contention” from its position in both the Petition and the Reply. See Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015). We therefore find that Petitioner impermissibly presents new theories of unpatentability on remand. 3. Independent Claim 1 We decline to address Petitioner’s new theories of unpatentability proposed on remand concerning Sachs’s Figure 7. See Pet. Remand Br. 15– 20. Although Petitioner cites pages 59–61 of the Petition as discussing Figure 7 of Sachs (see Pet. Remand Br. 15), the cited discussion concerns dependent claims 5 and 10, not independent claims 1 and 8.” slip op. at 17

  Patent outcomesUS 7,869,396 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,869,396
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Fendgo, LLCNo claims unpatentable
  PTAB · Apr 30, 2025 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–8 were not shown unpatentable because DiPerna964 and Strack do not teach or suggest the panic button readying itself to perform the claimed functions.

  RulingsFinal written decision

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

    “After review of the ’404 patent’s description, we find no disclosure that pressing the panic button together with another button causes the panic button to ready itself to perform functions (1) and (2) as recited in limitation 1[d]. The closest descriptions we find to limitation 1[d] are that the safety switch readies the panic button to contact 911 (Ex. 1001, 6:59–62), that the panic button may be activated by pressing the panic button with another button (id., 3:59–67, and that the panic button may start a speech recognition process that can trigger the device (id., 7:61–62). Consequently, claim 1 is itself the best source for determining what the claim language means. We determine that the ordinary and customary meaning of the “ready itself” feature of claim 1 is that the panic button “prepares itself to be triggered to perform the panic button functions (1) and (2).” Since the intrinsic evidence is sufficiently clear to discern the meaning of the “ready itself” limitation, we do not resort to extrinsic evidence. See Phillips, 415 F.3d at 1317 (explaining that extrinsic evidence is less significant than intrinsic evidence); Seabed Geosolutions (US) Inc. v. Magseis FF LLC, 8 F.4th 1285, 1287 (Fed. Cir. 2021) (Court of Appeals gives primacy to intrinsic evidence and resorts to extrinsic evidence only if consistent with intrinsic evidence); Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1324 (Fed. Cir. 2023) (Court of Appeals stating that its “decision rests solely on the intrinsic evidence”).” slip op. at 9

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Thus, the ’353 application describes that moving the safety switch into position readies the panic button to contact 911, which is not the same as the panic button being activated to ready itself to perform functions (1) and (2) required by claim 1 of the ’404 patent. Patent Owner’s reliance on disclosures elsewhere in the ’353 application is unavailing. PO Resp. 5–8 (citing Ex. 1006, 15, 17, 19–21, 23, 25); PO Sur-Reply 2–3 (citing Ex. 1006, 15, 17, 19–20, 24–25)). For example, while the ’353 application does mention voice activation with a codeword and activation by depressing of the panic button together with another button (see, e.g., Ex. 1006, 17, 21, 24–25), it does not mention that depressing the panic button together with another button causes the panic button to ready itself to perform recited functions (1) and (2). The application explains that “[t]he [panic] button can send a signal to a controller inside the device to activate [the code word activation] process” and “[t]he [panic] button can start the speech recognition process in one embodiment, to trigger the device.” Ex. 1006, 25. But that describes readying the device for activation by the code word, not readying the button to perform the recited functions. The ’353 application also mentions the word “ready” in relation to using a self-defense mechanism such as pepper spray, which does not appear to be related the readying of the panic button recited in claim 1. Ex. 1006, 15, 19–20. Petitioner has thus met its burden to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority.3 Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for limitation 1[d], which it has not done on this record. PO Resp. 5–8; PO Sur-Reply 2–3.” slip op. at 15

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

    “DiPerna964 discloses a separate “safety” switch that readies the panic button to contact 911 upon being pressed (Ex. 1028 ¶ 41), but there is no mention of pressing the panic button together with another button to cause the panic button to “ready itself” to perform panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit, as limitations 1[d] and 1[e] require. DiPerna964 mentions pressing two buttons together to activate the panic button (see, e.g., Ex. 1028 ¶¶ 17, 23–25, 27), but not to “ready itself” to perform recited functions (1) and (2). Petitioner relies on Strack’s triggering the collection of audio, video, and location data for transmission to a remote location as equivalent to a panic button readying itself to, when activated, perform the panic button functions (1) dialing a public or private network for an emergency purpose and (2) activating the transmitting unit. Pet. 15–17 (citing Ex. 1002 ¶¶ 76–88). We do not agree with Petitioner’s contention because Petitioner fails to explain how Strack’s button press that collects and then transmits audio, video, and location data would ready the panic button to perform recited functions (1) and (2). It appears that Strack’s button press readies the device, not the button, to perform the functions. As neither DiPerna964 nor Strack nor their combination teach or suggest limitations 1[d] and 1[e], we determine it is unnecessary to proceed further with the obviousness analysis. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014) (citing Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed.Cir.2006) (stating that we consider motivation to combine and reasonable expectation of success only “if all the elements of an invention are found in a combination of prior art references”)).” slip op. at 21

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which appears consistent with the educational level, technology, problems and solutions identified in the ’404 patent and prior art references asserted by Petitioner. 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 18

  Patent outcomesUS 11,265,404 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,265,404
• Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentable
  PTAB · Feb 20, 2024 · IPR2022-01283 · APJ Monica S Ullagaddi · IPR · Final written decision

  The Board held claims 1–63 not shown unpatentable under either §103 ground because Petitioner did not sufficiently support the asserted digital mapping and delta limitations.

  RulingsFinal written decision

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

    “Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge. Petitioner’s obvious-to-try rationale is insufficient to show that a person of ordinary skill would have used a digital-to-digital-mapping in which there are regions in which the deltas are both decreasing and increasing. Moreover, Petitioner’s Reply includes positions not supported by a Reply Declaration from Dr. Blumenthal and thus, constitute attorney argument that is not sufficiently supported by evidence. See, e.g., Pet. Reply 14–15 (Petitioner arguing “Roberts’ design obviates the need for a separate,” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Inst. Dec. 35 (citing Ex. 1006, 8:2, 8:8). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’998 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:64–2:36) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 3001, 172).6 We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’998] patent would understand that th[e] [claimed] approach of mapping, based on the converter output pattern differs 6 Ex. 3001 is a portion of the prosecution history of U.S. Patent No. 11, 133, 872, a parent of the ’998 patent. Ex. 2022 ¶ 34 (citing Ex. 1001, 2:5–9 (’998 patent disclosing common, prior art solutions such as “an analog pre-distortion circuit to feed the modulator”); Ex. 1005, 2:53; Ex. 1006, 7:67–8:5, Fig. 6); Ex. 1001, 2:35– 37(the ’998 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the parent ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts,” which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended claims, as the ’998 Patent itself admits.” Id. ¶ 79 (citing Ex. 1001, 2:5–9; Ex. 2009, 2; Ex. 1010, 16–48). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 3001, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’998 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 34

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

    “limitation 1.9. This is because the idealized sinusoidal curves that form the basis of Dr. Blumenthal’s analysis lack a sufficient showing of relevance to the teachings of Taraschuk cited by Petitioner. Patent Owner persuades us that Petitioner does not point to any basis for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 1.8 and 1.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 1.8 and 1.9. Even assuming, arguendo, we were to credit Petitioner’s arguments that “it is sufficient for the prior art to render obvious a mapping exhibiting the deltas features; the prior art need not calculate the deltas themselves” (Pet. Reply 11) and that “Dr. Dallesasse agrees that modeling a Mach- Zehnder modulator as exhibiting a sinusoidal response—as Dr. Blumenthal did—was ‘reasonable’ ‘to a first order’” and “[a]ny other sources of non-linearity would merely be less significant, ‘second order effects,’” (id. at 12– 13), Petitioner does not sufficiently show that the sinusoidal response curve would look like the one Dr. Blumenthal proposes. Dr. Blumenthal asserts, without specifically or credibly explaining why, that a person of ordinary skill in the art would have selected a region of the sinusoidal response curve that includes an inflection point such that deltas both decrease and increase over some portion of the curve being linearized. See Ex. 1003 ¶¶ 173–174 (scaling and shifting a sinusoidal response curve so that the curve contains an inflection point within the linearized region, but without adequately explaining the evidentiary basis for these selections); id. ¶ 52 (opining that “in the close vicinity of the center of the positive or negative inflection regions, otherwise known as the Quadrature point, the modulator is almost would have included regions on both sides of an inflection point). If a person of ordinary skill would have selected a region of the sinusoidal response curve on only one side of an inflection point, the evidence does not suggest that such a mapping would satisfy both limitations 1.8 and 1.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 52 (citing Ex. 1003 ¶ 196). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 53–54. Although there are three possible relationships between two,” slip op. at 32

  • ExcludeMotion to exclude, deniedDenied

    “IV. MOTION TO EXCLUDE Patent Owner requests that we exclude Petitioner’s Exhibits 1031 through 1038 submitted with Petitioner’s Reply. Paper 25, 1. Petitioner opposes. Paper 27. As we do not rely on any of these exhibits in rendering the findings and conclusions in this Decision, Patent Owner’s motion is moot.” slip op. at 40

  Patent outcomesUS 11,342,998 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,342,998

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