• Samsara Inc. v. Motive Technologies, Inc.No claims unpatentable
  PTAB · Jul 29, 2026 · IPR2025-00574 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–7 were not shown unpatentable because the asserted combinations did not establish the claimed video overlay and transmission for manual review.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s contentions in this ground do not cure the issues for limitations 1D and 1E. Petitioner’s contentions in this ground involve combining Khan and Ali’s teachings of identifying a horizon line and lane lines with Choe. For example, Petitioner argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have combined known elements according to known methods to yield predictable results” and that “[i]mplementing these known mathematical models in Choe’s calibration system, according to their known functions, would have yielded predictable results.” Pet. 39. Petitioner further argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have used a known technique (predictive models) to improve similar devices in the same way” and that “[u]sing predictive models for Choe’s lane and horizon prediction would have also applied a known technique (predictive models) to a known device (a manual annotator device) ready for improvement.” Pet. 40. Petitioner’s proposed combination, therefore, still relies on Choe’s teachings of transmitting an overlaid image to an annotator device. We note that Petitioner asserts that, “[o]nce Khan in view of Ali identifies the horizon and lane lines, it overlays the horizon line and/or lane lines on the video, as shown in the screenshots below.” Pet. 41–42. Although Petitioner mentions Khan and Ali’s teachings with respect to video here, Petitioner does not adequately explain how the teaching of an overlaid video would be combined with Choe’s single image annotator teachings. As discussed above, Choe discloses transmitting a single overlaid image to the annotator” slip op. at 23

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

    “Thus, Petitioner has not provided sufficient evidence and argument to explain how the additional teachings of Khan and Ali teach limitations 1D and 1E in combination with Choe. Petitioner, therefore, has not demonstrated unpatentability of claims 1–5 by a preponderance of the evidence. F. Obviousness over Choe and Workman (Claims 1–4) Petitioner asserts that claims 1–4 would have been obvious over the combined teachings of Choe and Workman. Pet. 47–52; Pet. Reply 26–30. Petitioner asserts that, “if [Patent Owner] alleges that Choe does not explicitly disclose which predictive models it uses or whether it uses predictive models to identify the horizon line, a [person of ordinary skill in the art] would have searched for references that use predictive models and how such models were used,” which “would have led to Workman, which discloses predictive models to identify the horizon line.” Pet. 47. According to Petitioner, “[u]sing Workman’s predictive model to identify the horizon line would also have merely been combining known elements ([convolutional neural networks (CNNs)] and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way.” Pet. 48–49. Thus, Petitioner relies on Workman to teach a predictive model to identify a horizon line. See Pet. 47–49. Choe with respect to limitations 1D and 1E. Indeed, Workman involves horizon line estimation in single images. See Ex. 1011, 10 (§ 5) (“We introduced Horizon Lines in the Wild (HLW), a new dataset for single image horizon line estimation, to address the limitations of existing horizon line detection datasets.”). Petitioner, therefore, has not demonstrated unpatentability of claims 1–4 by a preponderance of the evidence.” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner criticizes Petitioner’s proposed level of ordinary skill for not requiring “any training or experience in ‘automotive systems,’ precisely what the ’580 [p]atent relates to.” PO Resp. 7. According to Patent Owner, a person of ordinary skill in the art would have had “a training and/or experience in design of software for camera/sensor systems in the automotive industry.” PO Resp. 8–9 (citing Ex. 2003 ¶ 35).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. 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 6

  Patent outcomesUS 11,875,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,875,580
• Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentable
  PTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.

  RulingsFinal written decision

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12

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

    “Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43

  Patent outcomesUS 9,865,135 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,865,135
• Candela Corporation v. Nikolai TankovichNo claims unpatentable
  PTAB · Jun 5, 2024 · IPR2023-00234 · APJ Sheridan K Snedden · IPR · Final written decision

  The Board held claims 1–28 not shown unpatentable because the asserted combinations did not establish simultaneous delivery of overlapping and non-overlapping laser beams.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 19; Ex. 1002 ¶ 77. Patent Owner does not dispute this proposed level of skill, but offers that a “POSA may have alternatively held a degree in electrical engineering.” PO Resp. 10; Ex. 4–10, 13, 15–17. We adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the cited prior art and is undisputed on this record, and also consider Patent Owner’s additional proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner

    “In this case, the Specification is devoted to the teaching simultaneous delivery of multiple laser beams. The Specification begins by stating that “[t]here are no lasers or laser handpieces on the market today that can simultaneously deliver two or more wavelengths of laser energy in spacial, fractional form.” Ex. 1001, 1:12–14. The Specification explains that “laser treatment usually requires different modalities of energy in order [to] successfully treat the pathologies to which they are applied,” but that “the sequential application of multiple wavelengths of laser energy compromises the treatment.” Id. at 1:16–25. The Specification then continues to explain various problems associated with the sequential application of multiple wavelengths. Id. at 1:25–52. The Specification concludes its introduction as follows: What is needed in the art therefore is an effective laser therapy system that can simultaneously deliver multiple wavelengths of laser energy through the use of a single laser unit without producing interference between the wavelengths within the treated tissue.” slip op. at 13

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

    “summarized above, we find Patent Owner to have the better position. In particular, we agree with Patent Owner that the combination of Hsia and Black fail to teach or suggest simultaneously delivering non-overlapping beams. The combination also fails to teach or suggest producing beam patterns that include both overlapping and non-overlapping beams. PO Resp. 34. To begin, while we recognize that Hsia discloses overlapping and non-overlapping treatment patterns, those patterns are achieved by the sequential delivery of laser beams as a user physically moves a single handpiece that delivers a single beam across the skin of a patient. Ex. 1004 ¶ 68, Figs. 8 and 9; Ex. 2001 ¶¶ 73–74. Black does not cure that deficiency as Black does not disclose treatment with non-overlapping beams. Ex. 2001 ¶ 99. Black discloses using a “refractive optics, mirror-based optical delivery device” for the simultaneous delivery of multiple overlapping laser beams. Ex. 1006 ¶¶ 12– 13. The beams align on an optical path and, using different laser beam parameters, deliver treatment at various depths within a combined beam path. Id. ¶¶ 54, 58–59. Thus, while Black may be characterized as creating overlapping beams, we do not find sufficient support for a finding that Black teaches or suggests creating non-overlapping beams for simultaneous delivery, and the claims require both. We also do not find sufficient support for Petitioner’s claim that a POSA would have found it obvious to combine Black and Hsia to simultaneously produce both overlapping beams and nonoverlapping beams, based on the disclosures in these references. See, e.g.,” slip op. at 31

  • BurdenFwd all claims patentableNot shown unpatentable

    “Claims Claims Not 35 U.S.C. § Reference(s)/ Claims Shown Shown Basis Unpatentable Unpatentable 1–28 103 Hsia, Black 1–28 Hsia, Black, 23 103 23 Negus Hsia, Black, 27, 28 103 27, 28 Altshuler Altshuler, 1–28 103 1–28 Black Altshuler, 23 103 23 Black, Negus Overall Outcome 1–28 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has not shown by a preponderance of the evidence that claims 1–28 of the ’481 patent are unpatentable; and” slip op. at 41

  Patent outcomesUS 10,675,481 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,675,481
• Lzlabs GmbH v. International Business Machines CorporationNo claims unpatentable
  PTAB · May 23, 2024 · IPR2023-00274 · APJ Michelle N Wormmeester · IPR · Final written decision

  Claims 1–4, 6, 10–12, 16, and 17 were not shown unpatentable because Loderer did not teach a target machine condition code.

  RulingsFinal written decision

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

    “For purposes of this Decision, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9

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

    “c. Analysis We agree with Patent Owner. On this record, we find that Loderer does not teach or suggest the recited “target machine condition code.” Loderer says that “[t]he object of [its] invention is . . . to specify a method for simulating a condition code when porting hardware-specific program code from a source hardware to a target hardware that is not providing for condition code.” Ex. 1005, col. 1, para. 5 (emphasis added). Loderer’s claims are directed to “[a] method for simulating a condition code (CC), used for the execution of hardware-specific program code (PCU) for a source hardware (M1), in the program code (PCZ), obtained following transformation, for a differing target hardware (M2) with a machine architecture which operates without a condition code (CC).” Id., claim 1. In other words, Loderer’s target machine does not support condition codes, let alone a “target machine condition code.” Accordingly, Loderer does not teach or suggest a “target machine condition code.”” slip op. at 23

  Patent outcomesUS 8,713,289 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,713,289
• Netflix, Inc. v. Divx, LLCNo claims unpatentable
  PTAB · Feb 22, 2024 · IPR2020-00558 · APJ Iftikhar Ahmed · IPR · Remand

  The majority determined claims 1–24 were not shown unpatentable over Chen, Lindahl, and Hurst; the dissent would have found them obvious.

  RulingsRemand decision

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

    “We determine Patent Owner’s reading of the claim limitation is the better one. The limitation begins with the verb “locating,” and it therefore makes sense that the clause would recite what is located (i.e., encryption information) and where it is located (i.e., within the requested portions of the selected stream of protected video). In other words, it is reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as “locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video”).10 On the other hand, Petitioner’s reading of the limitation, 10 In general, we recognize that the use of commas to set off phrases in claim drafting is not consistent. We included commas above to illustrate Patent Owner’s understanding of the claim limitation. allowing only the second clause to modify the first, while not unreasonable, makes less sense. That is, the encrypted information identifies the encrypted portions of frames, which in turn are within the requested portions of the selected stream of protected video. Reading the claim in its entirety, the encrypted portions of frames would be understood to be located within the requested portions of the stream; it does not seem necessary for the claim to expressly recite that aspect. For example, the very next limitation— limitation [m] of claim 1—refers to “each encrypted portion of the frames of video” but does not expressly recite “within the requested portions of the selected stream.” Ex. 1001, 27:58–60. Thus, when limitation [l] recites “within the requested portions of the selected stream,” it seems more likely that the clause refers to where that encrypted information is located rather than simply to indicate the obvious location of the encrypted portion of the frames of video. We therefore view Patent Owner’s reading of the claim language as the better one.” slip op. at 13

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

    “I am persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix, slip op. at 9–10 (citing Pet. 17– 19, 69–70). I agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41– 15:60). I determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 52

  • Strike new argumentNew argument disregardedDecided for petitioner

    “I agree with Petitioner that Patent Owner’s Remand Brief, specifically pages 1–7, attempt to address aspects of claim 1 for the first time on remand. I also agree that Patent Owner’s arguments attempt to recharacterize limitations [j] and [k] to raise issues that Patent Owner did not raise previously, in contravention of our Order that issues raised needed support from “where those issues were raised in previous briefings by the parties.” Paper 56, 2. I have addressed whether scalability and FEC are integral to how Chen operates above, as well as whether the Petition relies on those aspects, supra. The questions about how Chen operates and what portions of Chen are asserted in the ground of unpatentability were previously raised, but now are being considered or reconsidered, based on the Federal Circuit’s decision. In Patent Owner’s Remand Brief, pages 1–7, the citations to argument previously raised do not support the arguments now presented by Patent Owner on remand. As such, I determine Patent Owner’s new arguments fall outside the scope of remand, and I dismiss these arguments seeking to distinguish limitations [j] and [k] from the cited prior art combination.24” slip op. at 62

  • ExcludeMotion to exclude, grantedMixed

    “7 Patent Owner’s Brief on Remand recognizes that there are two arguments Patent Owner raised in its Patent Owner Response that were not addressed in the Final Written Decision. See PO Remand Br. 1 (citing PO Resp. 24–37 (the construction of “locating encrypted information . . . within requested portions”), 38–58 (referring to Patent Owner’s “common keys” argument)). 8 The Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42). See Final Dec. 28–37 (granting-in-part, denying-in-part, and dismissing-in-part Petitioner’s Motion). Our determinations on that Motion were part of Petitioner’s appeal to the Federal Circuit. See Paper 52. Because the Federal Circuit did not address this aspect of the Final Written Decision and the Federal Circuit’s decision does not impact our previous rulings on the Motion, we maintain those rulings here. Additionally, on remand, Petitioner requested authorization to file a motion for sanctions, which we held in abeyance until the parties’ briefing on remand was complete. See Ex. 3003, 1. Petitioner requests sanctions because of the impropriety of Patent Owner’s remand brief, including new claim construction arguments for limitations [1j] and [1k], and prejudice to Petitioner. Id. at 3, 5. Although we reserved further consideration of Petitioner’s request, we expanded both the time and pages allowed for Petitioner’s responsive brief, and also allowed Petitioner to address any related issues in its responsive brief. Id. at 1. Having considered the parties’ briefing on remand, and given that we do not reach the claim construction arguments that Petitioner objected to in its request for authorization to file a motion for sanctions, we deny Petitioner’s request.” slip op. at 5

  Patent outcomesUS 10,225,588 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Restem, LLC. v. Jadi Cell, LLCNo claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01535 · APJ Devon Zastrow Newman · IPR · Final written decision

  Claims 1–15 were not proven unpatentable: Majore did not anticipate claims 1–13 and 15, and the asserted obviousness combinations did not establish the claimed limitations.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1007 ¶¶ 132, 133. Importantly, however, Dr. Olson does not cite anything to support his opinion that the ordinary artisan would have known that MSCs could be cultured to be renewable from subepithelial UC tissue. Nor does Dr. Olson explain why the artisan would have had this understanding aside from simply stating it. Majore uses the word “subepithelial” only once to explain that primitive stem cells are “distributed in subepithelial and intervascular regions,” but this does not teach what Dr. Olson asserts. Accordingly, Dr. Olson’s testimony is entitled to little weight. Xerox Corp., IPR2022-00624, Paper 9 at 15–16 (finding that an expert’s conclusory assertions that repeat the proposition for which they are offered without “any additional supporting evidence or provide any technical reasoning” in support are “conclusory and unsupported, add[] little to the conclusory assertion[s] for which [they are] offered to support, and is” slip op. at 52

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “21 The parties do not dispute that the preamble’s recitation of “isolated cell” serves as a limitation to claim 1 as it provides antecedent basis for its recitation later in the body of the claim. Accordingly, we treat the preamble as limiting. “When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).” slip op. at 31

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

    “[JUDGE NEWMAN:] So if -- if the comparison is possible, why did you not present evidence of that comparison? MR. FITZPATRICK: We --we’ve had the -- we had this discussion with our -- with our expert, and our conclusion was that it’s just not -- it wasn’t necessary. The conclusion was that the -- the evidence that’s in the -- in the prior art references, including the fact that it clearly practices the exact same steps as the claims, that was sufficient to -- and would anticipate or render obvious the claims. That’s the only reason we didn’t present evidence -- our own evidence.” slip op. at 38

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

    “Ex. 1007 ¶ 168 (alteration in original). We agree that an ordinary artisan would be motivated to look to the teachings of analogous references for information, but to establish obviousness, a party must show that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner has not provided sufficient rationale to explain why the ordinary artisan would have been motivated to make the isolated cell with the specific marker profile or why the artisan would have looked to the cited references themselves out of the wide range of references available in the art.” slip op. at 64

  Patent outcomesUS 9,803,176 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,803,176
• Platform Science, Inc. v. Omnitracs, LLCNo claims unpatentable
  PTAB · Aug 29, 2022 · IPR2020-01612 · APJ Bart A Gerstenblith · IPR · Final written decision

  Claims 1–4, 6–9, 11, 12, and 15 were not shown unpatentable because Coffee did not disclose the claimed copying, and Coffee combined with Heijden did not cure that deficiency.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “In our Initial and Rehearing Decisions, we noted that Patent Owner did not contest Petitioner’s proffered level of ordinary skill in the art at that stage of the proceeding and we found “Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the ’308 patent and the prior art of record.” Initial Dec. 13 (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978)); Rehearing Dec. 16 (same). Therefore, we adopted Petitioner’s unopposed position as to the level of ordinary skill in the art. Initial Dec. 13; Rehearing Dec. 16. In its Patent Owner Response, Patent Owner states that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s offered level of ordinary skill in the art.” PO Resp. 7. Accordingly, we maintain our preliminary finding by adopting Petitioner’s proposed level of ordinary skill in the art, as set forth above.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “received message 7102 and the header of the response message 7202 are not the same. PO Resp. 25 (citations omitted); Pet. Reply 14. In the Petition, Petitioner argued that “header information” was the same in each message (received and response). Pet. 32 (citations omitted), 36–37. Petitioner relies on Tables 58 and 63, which show “Header.” Id. at 32–33, 37. Petitioner also relies on paragraphs 102 and 118 of Mr. Andrews’s Declaration. Neither the Petition nor Mr. Andrews’s Declaration, however, provide any sufficient basis to find that even a portion of the header or header information is copied from the received message to the response message. Mr. Andrews states his opinion as though it were fact without providing the underlying factual support for his opinion. See Ex. 1003 ¶¶ 102, 118; see 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). In cross-examination, Mr. Andrews provided additional information explaining which portion of the headers he believes are the same, but he still does not provide any explanation as to why he believes the information is copied. See, e.g., Ex. 2007 at 111:3–25. The same is true of Petitioner’s Reply, which reiterates Mr. Andrews’s deposition testimony, but still fails to provide any reason as to why Coffee’s charts or Mr. Andrews’ testimony necessarily means that Coffee copies a portion of the header from the received message to the response message. See Continental Can Co. U.S.A., Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). And, despite Petitioner’s identification of a “Header” listed in Tables 58 and 63, Coffee does not expressly describe the header or part of the header as being copied from the received message to the response message. The Petition and Mr. Andrews also state that “if Coffee did not employ such copying, the response message would not automatically include information extracted from the received message.” Pet. 38 (citing Ex. 1003 ¶ 118). But, Coffee does not expressly describe the header as being “extracted from the received message” or describe automatically including the header in a response message to make the leap argued by Petitioner and Mr. Andrews. Accordingly, on the full record before us, we find that Petitioner has not established that Coffee explicitly or inherently discloses copying the header or header information and we do not credit Mr. Andrews’ testimony, discussed above, because he fails to provide the underlying factual basis for the opinions offered.” slip op. at 43

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

    “proceeding and on the full record before us, we do not find that Coffee’s silence is sufficient to support Petitioner’s argument. See Campbell Soup Co. v. Gamon Plus, Inc., 787 Fed. Appx. 731, 739 (Fed. Cir. 2019) (“We do not find any error in the Board changing its understanding of the teachings of [a prior art reference] from the institution decision to the final written decision. ‘The Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced that its inclinations were wrong.’” (quoting Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016))). Coffee does not explain the process by which the IOD of the received message is included in the response message; rather, Coffee just states that the response message “contains the IOD of the message being answered.” See, e.g., Ex. 1005, 56:63–67 (see full text quoted above). In particular, although Coffee attributes certain actions to the operator, the lack of attribution to the operator does not necessitate that the only viable possibility remaining is that Coffee copies the IOD from the received message to the response message. Even if it may be said that Coffee probably (or possibly) copies the IOD, that probability is not sufficient to find that Coffee necessarily copies the IOD. See Continental Can, 948 F.2d at 1269 (“Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”).7 Additionally, on the full record before us, we determine that Mr. Andrews’s testimony, as with his testimony as to copying of the header and selected response, fails to provide any factual or underlying support for his opinions expressed therein. See Ex. 1003 ¶¶ 100–102. In particular, the leap occurs in paragraph 102, where Mr. Andrews takes the fact that some information (at least the IOD) from the received formatted message is included with the response message to opine that this means the information is “copied over.” Id. ¶ 102. But, again, Coffee is silent. And because Mr. Andrews did not provide any underlying factual basis for his opinion, we do not credit his testimony as to copying the IOD. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 48

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

    “generally, including the alleged benefits of such and reasons why one of ordinary skill in the art would have been prompted to include field-mapping information in Coffee’s MDT. See id. at 62–70. None of Petitioner’s discussion, however, explains how the combination of Coffee and Heijden remedies the deficiencies that we identified regarding Petitioner’s challenge based on Coffee. In particular, Petitioner does not assert or explain how the teachings of Heijden would be applied to Coffee such that Coffee would then copy or fill in the specific information from Coffee’s received message to Coffee’s response message, particularly as pertains to the header, Response, and IOD fields (which Petitioner relied on in the first ground), or any other information field from Coffee. The same is true of Mr. Andrews’s testimony. See Ex. 1003 ¶¶ 214–231. Additionally, it appears that Petitioner’s analysis of the combination of Heijden and Coffee maintains the position that Coffee copies information fields. See Pet. 70 (“Given that Coffee’s system already implements field mapping to copy information fields . . . .”). And, Mr. Andrews’s testimony similarly maintains that Coffee copies information fields. See Ex. 1003 ¶ 229 (“Coffee also discloses (at least inherently) field mapping by describing that data is copied from fields in request messages into corresponding fields in response message.”). But, as we explain in detail in the context of Petitioner’s challenge based on Coffee, Petitioner has not shown sufficiently that Coffee copies or fills in information from a received message to a response message. Thus, we do not find and Petitioner does not allege that Ground “1B” fills the gaps identified in Petitioner’s Ground “1A.”10 Accordingly, we determine that Petitioner has not established, by a preponderance of the evidence, that the combination of Coffee and Heijden would have rendered the subject matter of claims 1–4, 7–9, and 12 unpatentable.” slip op. at 60

  Patent outcomesUS 6,925,308 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,925,308
• Dril-Quip, Inc. v. FMC Technologies, Inc.No claims unpatentable
  PTAB · Aug 1, 2022 · PGR2021-00049 · APJ George R Hoskins · PGR · Final written decision

  Claims 1–11, 14, and 15 were not shown unpatentable under § 103 over Maersk or Broussard, due to missing claim limitations and insufficient motivation to modify.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner contends this person “would have had a Bachelor’s degree in mechanical or petroleum engineering or similar subject matter, and at least approximately two years of work or research experience in subsea oil and gas completion systems related to the analysis, design, development, and/or manufacturing of equipment for subsea completion systems for use in subsea oil and gas wells.” PO Resp. 16; Ex. 2002 ¶ 11. Thus, the parties essentially agree on the level of ordinary skill in the art to be applied in this proceeding. Their agreement is consistent with the level of skill reflected in the ’921 patent and the prior art of record. Further, we would reach the same decision regardless of whether we adopt Petitioner’s or Patent Owner’s formulation. We therefore do not need to delve into any fine distinctions between the two formulations.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “However, Maersk’s other two seal barriers—a ring seal, and a production packer—both appear to be passive barriers. See Ex. 2002 ¶ 60 (annotating Ex. 1019 to identify the ring seal); Ex. 1031 ¶ 33 (stating that passive barriers “include, inter alia . . . packers”). Dr. Hilbert does not explain persuasively why adding a third passive barrier would materially improve the sealing versus Maersk’s three existing barriers, so as to justify the extensive modifications required to re-route the annular fluid through the bore stab. See Ex. 1031 ¶¶ 33–35; id. ¶¶ 13–44 (discussing some of the modifications required). Further, Mr. Parks persuasively testifies, in opposition to Dr. Hilbert’s motivation testimony, that “deeper wells and increased annulus fluid pressure would not have led a [person of ordinary skill in the art] to modify Maersk to provide additional protective barriers.” Ex. 2002 ¶¶ 58, 60–63 (emphasis added). Some of this testimony has already been cited above. Additionally, Mr. Parks notably served on the editorial committee for API 17D. See id. ¶¶ 6, 63. He testifies that a person of ordinary skill in the art would have “recognized that API 17D does not support” Dr. Hilbert’s testimony, “because API 17D’s two-barrier requirement is not dependent on depth or pressure.” Id. ¶ 62 (citing Ex. 1022, 158 (§ 9.2.7)) (emphasis added). In particular: “there are practical considerations underlying the API 17D requirement for two barriers, and the lack of any specification for more than two barriers.” Id. ¶ 63. This testimony is supported by API 17D, which requires a minimum of two seal barriers for any system with a rated working pressure falling within the entire 5000–15000 psi range contemplated by API 17D. See Ex. 1022, 158 (§§ 9.2.7–9.2.8). Mr. Parks further testifies: “Two barriers, appropriately specified for” slip op. at 43

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “1. “production/annulus bore stab” In the Institution Decision, we determined the preamble of claim 1 (“A production/annulus bore stab”) is a limitation to the claim, which was a disputed issue at the time. See Inst. Dec. 16–20. Neither party has objected to our preliminary determination in their post-institution briefs. See, e.g., PO Resp. 15–16; Pet. Reply; Tr. 8:24–9:13. We, therefore, again conclude here that the preamble of claim 1 is a limitation to the claim, for the reasons provided in the Institution Decision.” slip op. at 9

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

    “We start our analysis with the claim language. The claim term in dispute is simply a “cylindrical” outer surface. The parties do not cite, and we do not discern, any other contextual claim language that might elucidate or limit the plain and ordinary meaning of “cylindrical.” Petitioner’s gloss on this term as connoting “an overall cylinder-like shape” is an unpersuasive attempt to broaden the meaning of the plain term “cylindrical.” It also would unhelpfully replace our present inquiry (What is a “cylindrical outer surface”?) with yet another inquiry (What is “an overall cylinder-like shape”?). Turning to the ’921 patent specification, we find that it discloses three different and distinct cylindrical outer surfaces: outermost cylindrical surface 102S, first cylindrical outer surface 102X, and second cylindrical outer surface 102Y. See Ex. 1001, Fig. 6, 3:47–51, 3:65–4:5. The distinctness of these three surfaces can be seen in Figures 5, 6, 8, 9, and 10. Petitioner’s attempt to combine these three distinct outer cylindrical surfaces, into one allegedly cylindrical outer surface (see Petitioner’s yellow annotations to Figure 6, supra), is not supported by the ’921 patent specification, which never describes the entire axial extent of the outer surface of bore stab body 102 as being “cylindrical.”” slip op. at 12

  Patent outcomesUS 10,689,921 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,689,921
• Incyte Corporation v. Concert Pharmaceuticals, Inc.No claims unpatentable
  PTAB · May 11, 2022 · PGR2021-00006 · APJ Devon Zastrow Newman · PGR · Final written decision

  The Board held claims 1–7 and 9–21 not shown unpatentable over either obviousness ground because Petitioner did not establish motivation to select Compound (I) from Silverman’s genus.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedOther

    “It is not necessary for an expert’s experience or expertise to precisely match the art at issue. SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). However, one offering expert testimony must at least have ordinary skill in the art to provide relevant and reliable testimony that is helpful to the factfinder. Kyocera Senco Indus. Tools, Inc. v. ITC, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). “The Board has broad discretion to assign weight to be accorded expert testimony.” Consolidated Trial Practice Guide 35 (available at https://www.uspto.gov/sites/default/files/documents/ tpgnov.pdf?MURL=). Dr. Patterson has a Ph.D. in Chemistry and over 30 years of experience in drug design, drug administration, evaluation of drug effectiveness, and participated in drug design for over 20 years. Ex. 1007 ¶¶ 4–10; Ex. 1008, 1–2. He is author or co-author on over eight peer-reviewed journal articles involving medicinal chemistry. Ex. 1007 ¶ 5. We find this level of skill to meet the qualifications for the level of skill in the art under the training and experience portion of the definition we have adopted for purposes of this opinion (see § II.B.), reproduced below: a Ph.D. in chemistry, pharmaceutical sciences, molecular biology, or a similar field, or an M.D. with similar background. A POSA would also have had at least several years of experience with drug design, drug development, clinical trials, or access to other individuals with that knowledge and experience. Likewise, a POSA would have had knowledge and experience in treating hair loss disorders, or access to a person with that knowledge and experience. We note that Dr. Patterson himself also proposes this definition. Id. ¶ 102. However, Dr. Patterson does not have “knowledge and experience in treating hair loss disorders” and did not opine that, in regards to his testimony, he had access to a person with that knowledge and experience, as is proposed in the definition. See generally, Ex. 1007. Accordingly, we find Dr. Patterson qualified to opine on the level of ordinary skill with regard to issues of drug design, evaluation of effectiveness, and drug administration, but we find he is not adequately qualified to opine on the level of ordinary skill with regard to issues of treating hair loss disorders.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner proposes the same definition as Petitioner, but adds that the skilled artisan “would also have had experience in JAK inhibition, deuteration, and AA [alopecia areata] formulations, or access to a person with that knowledge and experience.” Resp. 15 (citing Ex. 2059 ¶ 14). Patent Owner’s expert Dr. Ko critiques Petitioner’s proposed definition as “incomplete, because it lacks any requirement for experience, or access to individuals with experience, in JAK inhibition, deuteration, and AA formulations.” Ex. 2059 ¶ 16. However, neither Dr. Ko nor Patent Owner explains what difference this additional direct experience would have provided to an artisan with the skill level proposed by Petitioner, particularly when Petitioner’s definition includes “experience in treating hair loss disorders,” and for which the record contains evidence that existing JAK inhibitors such as ruxolitinib had been identified as causing reversal of hair loss caused by AA. Ex. 1003, 1043. Accordingly, we adopt Petitioner’s proposed definition as consistent with the level of skill apparent in the cited prior art. In any event, as Patent Owner does not explain why its alternative definition would have any bearing on the outcome of the present case, and as we discern no appreciable difference in the parties’ definitions, we note our findings and conclusions would be the same regardless of which definition were adopted. We further note that the prior art itself demonstrates the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11

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

    “C. Claim Construction We construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100. Therefore, we construe the challenged claims under the framework set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art (“POSA”), at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id. Only those terms that are in controversy need be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We have considered Petitioner’s claim construction proposals (see Pet. 21–23), which are uncontested (see generally Resp., not addressing construction), and find that it is not necessary to expressly construe any claim term for purposes of rendering this Decision.” slip op. at 13

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artDecided for patent owner

    “Section 102(b)(1) provides two exceptions to § 102(a)(1) for disclosures made within one year of the effective filing date. Specifically, 35 U.S.C. § 102(b)(1) provides that a disclosure made one year or less before the effective filing date of a claimed invention shall not be prior art under 35 U.S.C. § 102(a)(1) with respect to the claimed invention if: (A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or (B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor. 35 U.S.C. § 102(b)(1).” slip op. at 16

  Patent outcomesUS 10,561,659 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,561,659
• Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCNo claims unpatentable
  PTAB · Mar 7, 2022 · IPR2020-01367 · APJ Scott C Moore · IPR · Final written decision

  Claims 1–36 were not shown unpatentable because Kennewick did not teach the claimed ambiguity of words having different meanings in different contexts or the required context identification.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (a “POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4–5 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not dispute Petitioner’s assertion, and Patent Owner and its declarant, Dr. Gershman, both apply Petitioner’s definition of a POSITA. Resp. 3. On this record and given the absence of any dispute, we adopt and apply Petitioner’s proposed formulation regarding the level of ordinary skill in the art, which we find is consistent with the level of skill reflected in the cited prior art references. See Okajima, 261 F.3d at 1355.” slip op. at 8

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

    “[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In its Petition, Petitioner asks us to construe the “implicit hypothesis” term of claims 38, 40, and 42. Pet. 7–8. As discussed above, however, Patent Owner filed a disclaimer that eliminated these claims from this proceeding. Petitioner does not ask us to construe any terms in the remaining challenged claims. See id.; see generally Reply. Patent Owner also does not ask us to construe any claim terms. See generally Response. On this record, we decline to adopt constructions of any claims. See Nidec, 868 F.3d at 1017. slip op. at 9

  • Expert testimonyPetitioner expert discountedMixed

    “Dr. Smyth’s declaration testimony about words having different meanings in different contexts is unpersuasive. Dr. Smyth testifies that the keyword “‘temperature’ could be interpreted as an outdoor temperature or as a body temperature depending on context.” See Ex. 1002 ¶ 69. This testimony is not persuasive because the word “temperature” refers to a measurement of warmth or coolness in both examples. That is, “temperature” has the same meaning in both contexts. Moreover, as Dr. Gershman points out, Kennewick does not teach or suggest a body temperature. Ex. 2001 ¶ 26. Dr. Smyth’s testimony is unpersuasive for this additional reason. See Ex. 1002 ¶ 69.” slip op. at 17

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

    “forth by both parties, we are not persuaded that Kennewick teaches or suggests that the word “temperature” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. As detailed above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with the ordinary and customary language of the claims, the specification of the ’681 patent, and the disclosure of Kennewick. See id. In contrast, Petitioner’s arguments are inconsistent with the ordinary and customary meaning of the claim language and the specification of the ’681 patent, and are not adequately supported by the disclosure of Kennewick. On this record, and having considered the evidence and arguments put forth by both parties, we also are not persuaded that Kennewick teaches or suggests that the phrase “what about flight one hundred and twenty too?” has different meanings in different contexts, as required by independent claims 1, 13, and 25. See Resp. 6–7; Ex. 2001 ¶¶ 28–30. Moreover, even if the “flight” example did describe two contexts (one in which “flight 122” exists, and one in which it does not), Petitioner’s argument would still fail because Petitioner has offered no persuasive evidence that Kennewick teaches or suggests identifying one of these two alleged contexts based on Kennewick’s short-term shared information (dialog history) and long-term shared information (user profiles) as required by independent claims 1, 13, and 25. For the reasons explained above, Patent Owner’s arguments and the supporting testimony of Dr. Gershman are consistent with and supported by the claims and specification of the ’681 patent and the disclosure of Kennewick. See Resp. 4–6; Ex. 2001 ¶¶ 23–27. In contrast, Petitioner’s arguments are not consistent with or supported by the ordinary and customary meaning of the claim language, the specification of the ’681 patent, or the disclosure of Kennewick.” slip op. at 20

  Patent outcomesUS 8,073,681 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,073,681

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.