• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentable
  PTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8

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

    “We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10

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

    “We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29

  Patent outcomesUS 11,886,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,886,774
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.Some claims unpatentable
  PTAB · Sep 28, 2026 · IPR2025-00531 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–11 and 13–15 are unpatentable over the stated obviousness grounds; claim 12 was not shown unpatentable.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–15 of the ’698 patent. Discretionary denial of institution was determined to be not appropriate in this proceeding, and the proceeding was referred to the Board. Paper 10. Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–15 of the ’698 patent on all presented challenges. Paper 11 (“Inst. Dec.”), 15.” slip op. at 2

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

    “Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2025). For the reasons that follow, we determine that Shenzhen Tuozhu Technology Co., Ltd. (“Petitioner”) has shown by a preponderance of the evidence that claims 1–11 and 13–15, but not claim 12, of U.S. Patent No. 9,168,698 B2 (Ex. 1001, “the ’698 patent”) are unpatentable.” slip op. at 2

  Patent outcomesUS 9,168,698 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,168,698
• Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision

  Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14

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

    “Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15

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

    “Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy 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 16

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

    “Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34

  Patent outcomesUS 9,287,982 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,287,982
• Nokia Of America Corporation / AT&T Services, Inc. v. Iarnach Technologies LimitedSome claims unpatentable
  PTAB · Dec 10, 2025 · IPR2024-00899 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–3, 5, 10, 11, and 14 are unpatentable as obvious; claims 4, 12, 13, and 15 were not shown unpatentable under the asserted § 103 grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(citing Ex. 1003 ¶ 22). Patent Owner does not contest this proposed level of ordinary skill. PO Resp. 5. Also, neither party argues that the precise level of ordinary skill would be dispositive in this proceeding. We adopt Petitioner’s proposed level of ordinary skill because it is undisputed, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’892 patent. See, e.g., Ex. 1001, 1:19–2:8.” slip op. at 9

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

    “We agree with Petitioner. The evidence of record, including the ’892 patent and its prosecution history,9 indicates that the ordinary and customary meaning of “transitioning . . . from . . . to” encompasses both direct and indirect transitions. Looking first to the claim language itself, the word “directly” appears in claims 1, 6, and 10, but not claim 14, presumptively suggesting that claim 14 was intended to more broadly capture systems with either direct or indirect transitions. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”). Holding otherwise would fail to give any effect to the word “direct” as it appears in claims 1, 6, and 10. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions methodologies that render phrases in claims superfluous).” slip op. at 12

  • Expert testimonyPetitioner expert creditedOther

    “predictable and well-motivated variation of G.987.3, at the time of the claimed invention, to include a direct transition between the ONU’s two low-power states. See KSR v. Teleflex, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, . . . . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). We credit Dr. Sergienko’s testimony that a person of ordinary skill in the art would have been motivated to reduce power consumption and would have looked to ways of modifying G.987.3 to further that design goal. See Ex. 1003 ¶ 70; see also Ex. 1007, 97 (“For a variety of reasons, it is desirable to reduce the power consumed by an ONU as much as possible . . . .”). We also credit Dr. Sergienko’s testimony that there were only a small number of ways to modify the state transitions in G.987.3’s ONU, and that it would have been obvious to consider those possibilities. Ex. 1003 ¶ 70. Patent Owner does not contest this. Dr. Litvin concedes, for Patent Owner, that “there is no conceivable way the [ITU] did not consider the proposed transition” between the ONU’s two low-power states when drafting G.987.3, although he contends the standards body prohibited such direct transitions as “a conscious and reasoned design choice.” Ex. 2007 ¶ 108; see also id. ¶ 109 (opining that there were only four possible choices for transitions in the ONU, and the ITU “undoubtedly considered all of them, including the direct transition from . . . Listen and . . . Asleep”); PO Resp 24 (conceding that “G.987 explicitly considered the very direct transitions that Petitioner say would be used”). We also find persuasive Petitioner’s additional or alternative argument that Röger would have motivated modifying G.987.3 by allowing the ONU, while in sleep mode, to periodically turn on its receiver and check for messages from the OLT, which would have been direct transitions between “first” and “second” states as recited in claim 1. Pet. 20–22 & n.4; Ex. 1003 ¶¶ 82–84. The evidence suggests that modifying G.987 as Petitioner proposes would have been within the abilities of a person of the ordinary skill in the art at the time of the claimed invention—either to add a direct transition between Listen and Asleep states or to allow the ONU, while in its sleep (both transmitter and receiver off) mode, to periodically turn on its receiver temporarily to listen for polling messages from the OLT, as Röger teaches. Pet. 11–12, 14–15, 19; Ex. 1003 ¶¶ 70, 74. We also agree with Petitioner that there would have been motivation” slip op. at 26

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

    “We find persuasive Petitioner’s arguments that it would have been a predictable and well-motivated variation of G.987.3, at the time of the claimed invention, to include a direct transition between the ONU’s two low-power states. See KSR v. Teleflex, 550 U.S. at 417 (“When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, . . . . If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). We credit Dr. Sergienko’s testimony that a person of ordinary skill in the art would have been motivated to reduce power consumption and would have looked to ways of modifying G.987.3 to further that design goal. See Ex. 1003 ¶ 70; see also Ex. 1007, 97 (“For a variety of reasons, it is desirable to reduce the power consumed by an ONU as much as possible . . . .”). We also credit Dr. Sergienko’s testimony that there were only a small number of ways to modify the state transitions in G.987.3’s ONU, and that it would have been obvious to consider those possibilities. Ex. 1003 ¶ 70. Patent Owner does not contest this. Dr. Litvin concedes, for Patent Owner, that “there is no conceivable way the [ITU] did not consider the proposed transition” between the ONU’s two low-power states when drafting G.987.3, although he contends the standards body prohibited such direct transitions as “a conscious and reasoned design choice.” Ex. 2007 ¶ 108; see also id. ¶ 109 (opining that there were only four possible choices for transitions in the ONU, and the ITU “undoubtedly considered all of them, including the direct transition from . . . Listen and . . . Asleep”); PO Resp 24 (conceding that “G.987 explicitly considered the very direct transitions that Petitioner say would be used”). We also find persuasive Petitioner’s additional or alternative argument that Röger would have motivated modifying G.987.3 by allowing the ONU, while in sleep mode, to periodically turn on its receiver and check for messages from the OLT, which would have been direct transitions between “first” and “second” states as recited in claim 1. Pet. 20–22 & n.4; Ex. 1003 ¶¶ 82–84. The evidence suggests that modifying G.987 as Petitioner proposes would have been within the abilities of a person of the ordinary skill in the art at the time of the claimed invention—either to add a direct transition between Listen and Asleep states or to allow the ONU, while in its sleep (both transmitter and receiver off) mode, to periodically turn on its receiver temporarily to listen for polling messages from the OLT, as Röger teaches. Pet. 11–12, 14–15, 19; Ex. 1003 ¶¶ 70, 74.” slip op. at 26

  Patent outcomesUS 9,806,892 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,806,892
• Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentable
  PTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8

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

    “We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. 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.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11

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

    “Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26

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

    “allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32

  Patent outcomesUS 7,330,431 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,330,431
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-01195 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; the remaining challenged claims were not shown unpatentable under the asserted obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person having ordinary skill in the art (“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”).” slip op. at 28

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

    “We agree with Patent Owner. Petitioner has not shown that any of the integrated circuits cited in the Petition would have been able to include the claimed acoustic model memory. Further, we find, contrary to Petitioner’s contention, that Patent Owner did not admit that procuring a processor and a memory capable of storing an acoustic model memory fabricated on an integrated circuit was within the level of ordinary skill. To the contrary, throughout the entire proceeding, Patent Owner has consistently argued that the claimed “calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” was unknown in the prior art. Petitioner has not shown that using the prior art elements relied on in the Petition according to their established functions would have resulted in “the calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” as recited in claim 1. In summary, Petitioner relies on Mozer to teach the benefits of fabricating a calculating apparatus and an acoustic model memory on the same integrated circuit, but Mozer does not teach a calculating apparatus and an acoustic model memory fabricated on the same integrated circuit. Further, the benefits of Mozer identified by Petitioner are benefits that both Mozer and Smyth already have, without fabricating the calculating apparatus and the acoustic model memory on the same integrated circuit. Also, even if Petitioner had shown there was a reason to combine Smyth and Mozer, Petitioner does not persuasively show that the combination teaches “the calculating apparatus and the acoustic model memory are fabricated on a single integrated circuit” as recited in claim 1. The Petition identifies only model memory for storing an acoustic model defining a plurality of acoustic states” as claimed, which is the one that “a POSITA would have been motivated . . . to fabricate” (Pet. 44), which was beyond the level of ordinary skill. We find that the Petition has not shown that claim 1 is unpatentable over Smyth and Mozer.” slip op. at 38

  Patent outcomesUS 10,839,789 mixed
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,839,789
• Apple Inc. / Amazon Web Services, Inc. et al. v. Zentian LimitedSome claims unpatentable
  PTAB · Jun 11, 2024 · IPR2023-00036 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 10, 12–14, 16–18, 20–23, 25–28, 35, 37–39, and 42–45 are unpatentable; claims 1, 2, 4, 6–9, 11, 24, and 29 were not shown unpatentable, principally because the asserted combinations did not establish the claimed …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) would have had “a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with at least four years of experience in the field of speech recognition,” and that “[a]dditional education or experience might substitute for the above requirements.” Pet. 3 (citing Ex. 1003 ¶¶ 24–25). Patent Owner contends that the Petition and supporting evidence, including the testimony of Mr. Schmandt, does not demonstrate that a person of ordinary skill in the field of speech recognition would have been able to fabricate an integrated circuit. PO Resp. 1. Patent Owner contends that a person of ordinary skill in the field of speech recognition would not also be expected to have specialized knowledge in integrated circuit fabrication in Petitioner does not present arguments to the contrary. See generally Reply. We agree with Petitioner, that a person of ordinary skill in the field of speech recognition would have had a master’s degree in computer engineering, computer science, electrical engineering, or a related field, with two years of experience in the field of speech recognition, or a bachelor’s degree in the same fields with four years of experience in the field of speech recognition.3 Ex. 1001, 1:25–2:27 (describing in the “Background of Invention” section of the ’789 patent various speech recognition systems and methods). We also agree with Patent Owner, and rely on the supporting testimony of Dr. Anderson, in finding that a person of ordinary skill in the field of speech recognition would not have been a person of ordinary skill in the field of integrated circuit fabrication, and would not have had the education, experience, or skill necessary to fabricate an integrated circuit.” slip op. at 8

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

    “Petitioner “applies the plain and ordinary meaning of all claim terms as understood by a POSITA for all terms.” Pet. 5. We conclude that no terms require express construction to resolve a dispute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (internal citation omitted)).” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “We agree with Patent Owner that Petitioner has not shown, by a preponderance of evidence, that state memory 342 of Smyth is fabricated on the same integrated circuit as processor 341. Petitioner, in asserting that processor 341 and state memory 342 are on the same integrated circuit, cites the following testimony of Mr. Schmandt: In my opinion, the Motorola DSP56000 provides both memory and a processor fabricated on a single integrated circuit (IC). Kloker (Ex. 1009), 1 (discussing the Motorola DSP56000 includes “a core processor, RAM, ROM, peripheral interfaces, and a memory expansion interface on a single, 88-pin chip[”)]. . . . A POSITA would have understood or at least found obvious that Smyth thus teaches a single IC on which both classifier processor 341 and state memory 342 are fabricated. Ex. 1003 ¶ 165; Pet. 39. We do not credit Mr. Schmandt’s testimony because it is inconsistent with Smyth’s disclosure. Smyth discloses that classifier 34 comprises classifying processor 341 and state memory 342, and that “classifying processor 341 may be a suitably programmed digital signal processing (DSP) device.” Ex. 1005, 5:55–57, 6:5–6. Thus, Smyth itself, in discussing classifier 34, distinguishes processor 341 from state memory 342 in stating that only processor 341, and not both processor 341 and state memory 342, may be located on the DSP. describe processor 341 and state memory 342 as being fabricated on a single integrated circuit. Ex. 2020 ¶¶ 34–37. Dr. Anderson persuasively explains that processor 341 and state memory 342 could not be fabricated on the same integrated circuit, because the design of the DSP for processor 341 does not include any memory that meets the requirements of state memory 342. Id. ¶¶ 38–45. We rely on the testimony of Dr. Anderson in finding that Petitioner has not shown that Smyth teaches that processor 341 and state memory 342 are fabricated on a single integrated circuit.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our Decision to Institute, we understood Petitioner’s theory based on the combination of Smyth and Mozer to include fabricating an integrated circuit in stating that we were sufficiently persuaded “that fabricating a single integrated circuit that includes a calculating apparatus and an acoustic model memory . . . was within the level of ordinary skill.” Dec. 23. Our understanding was based on the Petition’s multiple contentions that a person of ordinary skill would have found it obvious to fabricate Smyth’s processor and state memory on a single integrated circuit. See Pet. 41–44. For example, the Petition contends that “[a] POSITA would have found it obvious . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 41–42 (emphasis added)); “a POSITA would have understood and found obvious . . . to fabricate a calculating apparatus and acoustic model memory on a single integrated circuit” (Pet. 42 (emphasis added)); “[s]uch a use of a known technique of fabricating a memory and processor on a single integrated circuit” (id. (emphasis added)); “it would have been obvious to modify Smyth to form the classifier processor and associated memory on a single IC” (Pet. 43 (emphasis added)); (“it was well known in the prior art to fabricate a single integrated circuit” (Pet. 43–44 (emphasis added)); “[t]hus, a POSITA would have been motivated . . . to fabricate [Smyth’s processor and state memory] on a single integrated circuit” (Pet. 44 (emphasis added)). integrated circuit to using integrated circuits that were already fabricated. Reply 22–25. According to Petitioner, “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a POSITA modifying Smyth according to Mozer’s undisputed teachings of a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Id. at 23–24. However, as discussed in the previous paragraph, when discussing the combination of a processor and an acoustic model memory on an integrated circuit, the Petition used the verb “to fabricate” four times in the future tense and once in the present tense, as well as the verb “to form” once in the future tense. The Petition did not use the past tense phrase “were already fabricated” as alleged in the Reply. Moreover, the Petition did not map Smyth’s state memory (which the Petition contends teaches the claimed “acoustic model memory” (see Pet. 11)) to a memory already fabricated on an integrated circuit in the prior art. Rather, the Petition relied on Mozer to support its contention that a person of ordinary skill would have fabricated the calculating apparatus and acoustic model memory of Smyth on an integrated circuit. See Pet. 42, 44. The Petition cited Boike and Ozcelik in contending that fabricating an integrated circuit with processors and memories was well known, and cited Toyoda in contending that fabricating an integrated circuit with a calculating apparatus and an acoustic model memory was well known. Pet. 43–44 (citing Ex. 1006; Ex. 1029; Ex. 1034). However, the Petition did not explain how a memory located in one of the integrated circuits of Mozer, Boike, Ozcelik, or Toyoda would have been able to store Smyth’s state memory. Therefore, we disagree with Petitioner’s contention that “the Petition did not map a POSITA physically fabricating an IC, but rather mapped a single IC on which a calculating apparatus and acoustic model memory were already fabricated.” Reply 23–24. We find that this contention was untimely presented in the Reply. We do not permit Petitioner to propose a mapping of the prior art in the Petition and then completely change that mapping after Patent Owner argues the initial mapping was flawed. A “petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” TPG 73; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (holding that the Board did not err in refusing the reply brief as improper under 37 C.F.R. § 42.23(b) because petitioner relied on an entirely new rationale to explain why one of skill in the art would have combined the references at issue); 37 C.F.R. § 42.23(b); Apple Inc. v. eWatch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach as compared to the position originally taken in the Petition. Accepting such belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”).” slip op. at 27

  Patent outcomesUS 10,839,789 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,839,789
• Qualcomm Incorporated v. Fedex Corporate Services, Inc.Some claims unpatentable
  PTAB · Oct 6, 2023 · IPR2022-00586 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–15 and 26–30 are unpatentable as obvious over Lau and Benson; claim 28 also relies on Harring. Qualcomm did not show claims 16–25 unpatentable.

  RulingsFinal written decision

  • Exclude

    “We do not rely on Exhibits 1010, 1014, 1026, or 1027 for any determinations or findings in this decision. See infra note 10 (noting the context in which Ex. 1014 has been cited). When we use the phrase “evidence of record” or other similar terms or phrases, we are referring to the evidence of record except that evidence that is the subject of FedEx’s Motion to Exclude, that is, Exhibits 1010, 1014, 1026, 1027, and 2049. Accordingly, Patent Owner’s Motion to Exclude as to Exhibits 1010, 1014, 1026, and 1027 is dismissed as moot.” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Almeroth essentially agrees with Qualcomm’s articulation of the level of ordinary skill as expressed above. See Ex. 2200 ¶¶ 45–46. Because Qualcomm’s uncontroverted articulation of the level of ordinary skill in the art is supported by testimonial evidence by both parties and appears consistent with the types of problems and solutions in the ’231 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:16–2:37 (“Field of the Disclosure” and “Background” sections of the ’231 patent, describing background knowledge about methods for tracking packages using wireless sensor devices). Qualcomm also contends that an ordinarily skilled artisan “would have been familiar with the field of technology described [on pages 7–13 of 6 Qualcomm argues that this is “at least” the level of ordinary skill in the art. Pet. 7. As we did in our instituting decision, we disregard this qualification to avoid vagueness. Dec. 19 n.6; Dr. Almeroth agrees. Ex. 2200 ¶ 46. the Petition].” Id. (citing Ex. 1002 ¶ 41). The “Field of Technology” section of the Petition refers to background knowledge of RFID technology and hierarchical sensor networks. See Pet. 7–13. Because whether this subject matter is part of the background knowledge in the art is not determinative of our decision, we need not adopt this part of Qualcomm’s articulation of the level of ordinary skill.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction needed

    “Although the ’231 patent does appear to describe these as two separate embodiments, the embodiments both include smartphone 200. See Ex. 1001, 110:13–14, 19–20, 23–26. We find persuasive Qualcomm’s argument that the only apparent difference between the two embodiments is that in the second one, smartphone 200 has an app that allows it to use hardware capable of directly communicating with the server. In other words, the distinction is a matter of programming: the smartphone 200 is both “unable” and “not operable to” communicate with a server when it is not presently configured that way through software. This is inconsistent with Dr. Almeroth’s opinion that a device would not be “unable to directly communicate with the server” if it “ha[s] the circuitry components necessary to communicate with a server but simply lack the programming to do so presently.” Ex. 2200 ¶ 54. Thus, we do not find his testimony credible on this point. Regarding FedEx’s term-differentiation argument, we agree with Qualcomm that, based on the above evidence in the ’231 patent disclosure, there does not appear to be any meaningful difference between “unable to” and “not operative to” as those terms appear in the claims. Thus, we disagree with FedEx’s proposed construction of “unable to directly communicate with the server.” Our prior-art analysis below will be informed by the discussion above, but we need not explicitly construe this term to resolve the issues raised in the Petition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  Patent outcomesUS 9,182,231 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,182,231
• Google LLC v. Neonode Smartphone LLCNo claims unpatentable
  PTAB · Jan 11, 2023 · IPR2021-01041 · APJ Christopher L Ogden · IPR · Final written decision

  Google did not show claims 1–7, 9, 12, 13, and 15–17 unpatentable because the asserted combinations did not teach or suggest the claimed multi-step activation involving gliding away.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For Google, Dr. Wobbrock testifies that a person of ordinary skill in the art at the time of the invention, would have had “at least a bachelor’s degree in Computer Science, Human-Computer Interaction, Symbolic Systems, or related engineering disciplines, and at least two years of experience designing and programming graphical user interfaces,” but that “[r]elevant work experience can substitute for formal education and advanced degree studies could substitute for work experience.” Ex. 1003 ¶ 49. Testifying for Neonode, Dr. Rosenberg states that for his declaration, he “will apply the same definition of the level of skill of a [person of ordinary skill in the art]” as Dr. Wobbrock. Ex. 2019 ¶ 27. We find Dr. Wobbrock’s uncontested articulation to be reasonable in light of the subject matter involved in the ’879 patent and the asserted prior art. See, e.g., Ex. 1001, 1:49–61 (stating that the ’879 patent addresses technical problems including “to provide a user-friendly interface . . . on a small handheld computer unit”). Thus, we adopt it for our decision.” slip op. at 9

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

    “Google does not propose any explicit claim constructions in its Petition. See Pet. 4. Neonode does not propose any explicit constructions either, but in its Response, Neonode raises a number of claim construction arguments regarding the term gliding . . . away as it appears in limitation 1c, to which Google responds in its Reply. See PO Resp. 31–50, 66–69; Pet. Reply 7–12, 19–21; see also PO Sur-reply 1–10, 19–21. We do not need to construe this term explicitly for our decision, and to the extent we need to interpret this or any other terms, we address the terms below in the context of the prior art. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “We find Google’s argument unpersuasive.10 Tarpenning’s assignment operation for hotkey 82 is in the nature of a drag-and-drop operation, where the user drags the pen from hotkey 82 to the intended menu item to which hotkey 82 will be assigned. But Google identifies the “function [to be] activated”—not as the actual assignment of hotkey 82 to the menu item when the user lifts from the intended menu item—but as the underlying software process that looks to see whether the user has lifted yet from the selected menu item. See Pet. Reply 19–20; Tr. 37:17–39:16. Essentially, Google asserts that the recited function is part of processing the gesture itself, which we do not find persuasive. As counsel for Neonode argued at the hearing, unless the user lifts off from a menu item, no assignment to hotkey 82 has been made and nothing has actually been done. See Tr. 80:4– 13. 10 We also consider this argument untimely, as it appears to contradict Google’s original theory of obviousness in the Petition, which states that the “‘assignment’ function” is “completed when the user reaches the target item to be assigned.” Pet. 79; see also Tr. 80:2–3 (counsel for Neonode arguing, “I submit that’s not only a new point they’re making, it’s unsupported and . . . incorrect.”); 37 CFR § 42.23(b) (“A reply may only respond to arguments raised in the corresponding . . . patent owner response[] or decision on institution.”). We also find unpersuasive Google’s original argument in the Petition that the recited “function” is activated when the user reaches the target menu item being assigned to hotkey 82. See Pet. 79. This is essentially a traditional drag-and-drop operation. But we credit Dr. Rosenberg’s testimony that when the user lifts from the intended menu item, no function has actually been activated. See Ex. 2019 ¶ 139. Rather, at this point a function has merely been assigned to the hotkey for future activation by touching the hotkey. See id. Thus, we determine that Google has not identified any disclosure in Tarpenning in which any “function is activated by a multi-step operation” as recited in limitation 1c. Absent that teaching or suggestion, Google’s argument (Pet. 80–82) does not adequately articulate why a person of ordinary skill in the art would have modified Tarpenning’s book menu key 84 or library menu key 86 to achieve limitation 1c, and we find Google’s obviousness argument unpersuasive as to claim 1.” slip op. at 36

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “would have understood Robertson’s “flick” gesture to comprise “gliding . . . away” as we interpret that term. Robertson says very little about the “flick” gestures themselves, other than using the word flick. See, e.g., Ex. 1005, 39. Robertson teaches that its gestures should be “easily differentiated,” and in addition to “flick” gestures, Robertson also teaches “drag and drop” operations. Id. at 36 (“[Y]ou can drag a document icon and drop it into a printer icon to print the document . . . .”). We credit Dr. Rosenberg’s testimony that, for the XButton system to immediately distinguish between dragging and flicking, there must be some distinction between a “flick” and a “drag,” and that the most plausible difference is in terms of their speed, distance, or both. See Ex. 2019 ¶ 90. Although Robertson discloses that its system is capable of recognizing gestures that start on an XButton and extend outside it (see Ex. 1005, 43), a “glide” or that the distinction is arbitrary. Cf. Braintree Labs., Inc. v. Novel Labs., Inc., 749 F.3d 1349, 1360 (Fed. Cir. 2014) (“Descriptive words . . . are commonly used in patent claims, to ‘avoid[] a strict numerical boundary to the specified parameter.’” (alteration in original) (quoting Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995))) the only gesture for which Robertson specifically indicates this would be necessary is a “circling gesture[] for grouping, moving, and copying graphical objects” (id. at 39). Thus, we disagree with Google that Robertson’s teaching in this regard is relevant to what Robertson means by a “flick” gesture. We also find persuasive Neonode’s dictionary definitions, spanning from 1993 to 2012, which consistently indicate that the word flick describes a movement that is “light,” “sharp” or “quick,” and “jerky” or “sudden,” as opposed to definitions of “glide” referring to a movement that is “smooth,” “continuous,” and possibly “quiet” or “effortless.” Exs. 2049, 2050, 2052, 2057.9 And although the evidence postdates Robertson, we find relevant the supporting evidence that modern Apple and Google developers maintain a meaningful distinction between “flick” and “swipe” gestures. See Ex. 2022, 4; Ex. 2023, 6; Ex. 2025, 21; Ex. 2026, 5; Ex. 2029, 2; Ex. 2019 ¶¶ 80–81. We further credit Dr. Rosenberg’s opinion that in the relevant time frame, a person of ordinary skill in the art would have interpreted a “flick” gesture as one in which “the pen would touch the screen, but only moves on the screen for a very short distance and is quickly lifted from the screen in a ‘jerky’ motion.” Ex. 2019 ¶¶ 85–86. 9 The earliest dictionary definitions (Ex. 2052) are from 1993, which is roughly contemporary with Robertson (1991), and are sufficiently close in time to be relevant. Google does not present any evidence suggesting that the meaning of flick had changed between 1991 and 1993. See PO Sur-reply 2. Thus, we agree with Neonode that Google has not shown that Robertson’s “flick” gesture comprises “gliding . . . away,” and thus falls within the scope of claim 1. Finally, we also agree with Neonode that Google has not established that Robertson’s “insert” (caret) gesture comprises “gliding . . . away.” Although Robertson does not provide much information about this gesture, we find Dr. Rosenberg’s interpretation and annotated version of Figure 1 (Ex. 2019 ¶¶ 99–102) more credible than those of Dr. Wobbrock (Ex. 1003 ¶ 108). We credit Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood the “insert” gesture to be similar to the way a person would draw a caret to indicate an insertion within existing text. See Ex. 2019 ¶ 99. Thus, we agree it would involve two brief, connected movements with a sharp peak, neither of which would be a continuous gliding or swiping motion. Id. ¶¶ 100–102.” slip op. at 27

  Patent outcomesUS 8,095,879 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,095,879
• ROKU, Inc. v. Flexiworld Technologies, Inc.Some claims unpatentable
  PTAB · Oct 21, 2022 · IPR2021-00714 · APJ Brent M Dougal · IPR · Final written decision

  Claims 1–10, 12, and 14 are unpatentable; claims 15–20 were not shown unpatentable, principally because the prior art did not teach required claim limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree in computer science, computer engineering, or a similar field and two years of experience developing software. The POSA would be familiar with well-known networking technologies. . . . This description is approximate and additional experience could make up for less education and vice versa. Pet. 10–11 (citing Ex. 1002 ¶ 10). Patent Owner does not address the level of ordinary skill. See generally PO Resp. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’064 patent and prior art of record. purposes of this Decision.” slip op. at 8

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

    “The Petition states that no terms require express construction. Pet. 10. Patent Owner does not provide any express constructions or argue that any terms require construction. PO Resp. 10. Petitioner and Patent Owner also note that there were claim construction disputes in the District Court (Pet. 10, PO Resp. 10) and that the District Court has now issued a claim construction order (Prelim. Resp. 7; Ex. 2010). We agree that no claim term needs to be construed. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms that are in controversy, and only to the extent necessary to resolve the controversy.” (internal quotation omitted)).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableDecided for patent owner

    “The mere listing of features that are present in Ortiz is not a reason why a person of skill in the art would have combined Ortiz with Ikonen. An obviousness determination must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). Thus, for this additional reason Petitioner has not shown how the combination of Ikonen, Beck, and Ortiz, or the combination of Ikonen, Beck, Ortiz, and Garfunkel, teaches all of the limitations of these claims.” slip op. at 16

  • Expert testimonyPetitioner expert creditedOther

    “Petitioner’s declarant testimony that one of ordinary skill in the art “would consider the document data received by the interface box [in Yamaguchi] to be an ‘output data stream’ as claimed.” Ex. 1002 ¶ 216; see also Pet. 53. Petitioner’s declarant explains that this is based on the ’064 patent’s teaching of “using conventional wireless technologies such as Bluetooth and 802.11” for uploading the output data stream. Id. Further, the claim requires that the “output data stream correspond[] to at least part of digital content that includes . . . document content” and Patent Owner’s declarant admits that Yamaguchi teaches uploading a document. Thus, it is not clear that anything further is required by the claim. After our review of Petitioner’s assertions with respect to this claim limitation, we determine that Petitioner’s position is supported by a preponderance of the evidence.” slip op. at 28

  Patent outcomesUS 8,989,064 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,989,064

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.