• Resmed Corp. v. Cleveland Medical Devices, Inc.All claims unpatentable
  PTAB · Jun 29, 2026 · IPR2025-00246 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 15–29 are unpatentable as obvious over the asserted combinations; the contingent motion to amend claims 30–41 is denied for lack of written-description support.

  RulingsFinal written decision

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

    “Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name its corporate parent, ResMed Inc., as a real party in interest. Paper 39. Petitioner filed an opposition. Paper 42. Patent Owner filed a reply. Paper 43. We denied the Motion to Terminate. Paper 51.” slip op. at 3

  • Skill levelSkill level board ownOther

    “understanding of a person of ordinary skill in the art at the time the invention was made.10 See Graham, 383 U.S. at 17–18. The parties agree that a person of ordinary skill in the art (sometimes referred to herein as “POSITA”) would have had: at least a bachelor’s degree in mechanical engineering, electrical engineering, computer science, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience working with diagnostic sensor systems and network data systems, such as networked PAP machines. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 3–4 (citing Ex. 1003 (Kirkness Decl.) ¶ 44); PO Resp. 4. 9 Patent Owner does not assert any objective indicia of nonobviousness. See generally PO Resp. 10 For purposes of this Decision, we apply a priority date of November 4, 2005. See supra n.4. Because the proposed level of ordinary skill in the art is consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. 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 › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Patent Owner does not persuade us to construe the term as “a value [or calculated value] that indicates how dire a patient’s symptoms are.” Patent Owner points to nothing in the intrinsic record that purportedly supports this construction, and we agree with Petitioner that “the patent specification’s disclosures regarding determining a level of symptom severity are broad, establishing that it can generally be derived from any sensor data and/or breathing events.” Pet. Reply 3–4; see also Ex. 1001, 3:44–46 (“Signals from the[] sensors are then analyzed to determine the level of severity of the symptoms of the subject’s sleep disorder.”). Patent Owner relies only on expert declarations to support its construction. But as indicated by the Federal Circuit, extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). This is especially applicable here, where neither Dr. D’Ambrosio’s nor Dr. Schwartz’s declaration was prepared for this proceeding, and neither declarant was subject to cross examination on their opinions. Moreover, neither of the declarants was opining on claim construction; rather, they were addressing indefiniteness and/or written description issues. See Ex. 1058 at 7 (heading addressing definiteness); Ex. 2026 at 18 (heading addressing written description). Further, Dr. Schwartz appears to have been making an argument about certain patent claims (not the challenged ’333 patent) based on Patent Owner’s own statements made during prosecution of a separate patent application. See Ex. 2026 ¶ 47 (“[T]he similar term used in the ’284 patent claims (‘data of severity of sleep disorder symptoms’) does not find written description support in the specification by a disclosure of the same statistics disclosed in Wright, because CleveMed argued those statistics are not related to severity of sleep disorder symptoms.” (emphasis added)). Patent Owner has not persuaded us that Dr. Schwartz’s testimony has direct applicability to the claim term at issue here. Dr. Borkholder’s testimony is likewise unpersuasive. Aside from citing Dr. D’Ambrosio’s and Dr. Schwartz’s declarations, Dr. Borkholder cites Exhibits 2027 and 2016. These exhibits discuss indices such as AHI and RDI that are used to assess the severity of a patient’s symptoms, but Patent Owner has not adequately explained how they bear on construction of the claim term at issue here, which is not addressed in these exhibits. Ex. 2022 ¶¶ 32–33. Accordingly, we accord Dr. Borkholder’s claim construction opinions little weight, because they are unsupported by reference to objective, corroborating evidence of record. See, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”); Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB 2023) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”).” slip op. at 23

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

    “We find that Petitioner has the better argument. Tidal volume refers to “the volume of air that is inspired or expired during a respiratory cycle.” Ex. 2028, 13–14; PO Resp. 10. “[H]ypopnea events are defined as a reduction of ≥50 % or 74 % in tidal volume from baseline and apnea events as absence of tidal volume for at least 10s.” Ex. 2028, 13–14 (emphasis omitted). Toge teaches that a control unit analyzes collected data (e.g., the flow rate) and calculates tidal volume. Ex. 1044 (Toge) ¶¶ 34–38. The calculated tidal volume is “a quantified level of severity data based on the subject’s sleep apnea symptoms during the therapy” because it represents, e.g., the “level of airway obstruction the patient experiences during the sleep apnea treatment using the PAP device.” Pet. 15. As Dr. Chatterjee explains: Toge discloses that tidal volume Fp is a quantified level of data because Toge discloses that Fp is monitored with respect to threshold values (id., [0051]) and because Fp is a function of Ft, Fa, and Fb, which are quantitative values. Toge discloses that tidal volume Fp is severity data because Toge discloses that tidal volume is indicative of whether the patient’s breathing warrants “emergency measures” (id., [0039]) and whether to “send an alert” in “an emergency where the patient’s breathing has drastically weakened” (id., [0055]). . . . . Because Toge discloses determining tidal volume (determine a quantified level of severity data) based on Ft, Fa, and Fb (id., [0035]), which corresponds to the subject’s condition (subject’s sleep apnea symptoms) while using the device (during the therapy) (id., [0036], [0037]), Toge discloses determin[ing] a quantified level of severity data based on the subject’s sleep apnea symptoms during the therapy. Ex. 1005 (Chatterjee Decl.) ¶¶ 122–125. Patent Owner’s attempt to dismiss tidal volume as a mere “breathing metric” is unavailing. First, Petitioner correctly “notes that in the paragraph PO cites to in Dr. Schwartz’s declaration, he indicates that breathing metrics are a level of severity data.” Pet. Reply 8 (citing Ex. 2026 ¶ 46 (“standard sleep disordered breathing metrics” [ ] were well validated indicators of the type and severity of sleep disordered breathing”)). Second, Dr. Kirkness explains that tidal volume represents the level of airway obstruction, e.g., apnea “is the most severe form of reduction in airflow [and] the absence of airflow results in quantified tidal volume of zero milliliters per breath.” Ex. 1003 (Kirkness Decl.) ¶¶ 157, 159; see also PO Resp. 10–11 (Patent Owner recognizing that an apnea is defined as absence of tidal volume for at least 10 seconds). The calculated tidal volume thus indicates severity because it is used to adjust the PAP system, e.g., in the case of decreasing tidal volume, a medical professional can change the airflow settings “to counter/treat the more severe level of airway obstruction observed from the decreasing tidal volume.” Ex. 1003 (Kirkness Decl.) ¶ 158; Pet. 15–16; Ex. 1044 (Toge) ¶ 39.” slip op. at 26

  Patent outcomesUS 11,857,333 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,857,333
• First Quality Retail Services, LLC / First Quality Consumer Products, LLC et al. v. Essity Hygiene And Health ABAll claims unpatentable
  PTAB · May 12, 2026 · IPR2024-01487 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–5, 7, 8, 20–22, 24, and 25 are unpatentable, based on anticipation by Bergstrom and obviousness over the stated combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Institution Decision, we adopted Petitioner’s definition. Dec. 9–10. In its Response, Patent Owner cites to Petitioner’s definition and states that Patent Owner “applies Petitioners’ definition.” PO Resp. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’138 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

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

    “We begin our analysis with the language of the claims. Phillips, 415 F.3d at 1312; see also SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 874–875 (Fed. Cir. 2004) (“There is a ‘heavy presumption’ that the terms used in the claims ‘mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.’”). Claim 1 recites, in relevant part, “said fluid flow control structure being a layered structure comprising a non-perforated fibrous polymeric layer and a first perforated polymeric layer.” Ex. 1001, 13:62–64 (limitation [1h]). The plain language of claim 1 does not address additional properties of the perforated polymeric layer; the language of the dependent claims, however, imposes additional limitations on the properties of the perforated polymeric layer such as a particular basis weight (claim 2), a particular makeup (claim 3), a particular aperture size (claim 7), a particular open area (claim 8), and that it “is a three-dimensionally formed layer having penetrating apertures extending from a first surface of the first perforated polymeric layer towards a second surface of the first perforated polymeric layer and forming protrusions on said second surface” (claim 4). The dependent claims’ additional language indicates that the term “perforated” within the term “perforated polymeric layer” in claim 1 is not limited in the manner asserted by Patent Owner’s proposed construction.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “layer pierced through with holes or apertures,” we are persuaded that Petitioner meets its burden as to this limitation. Petitioner argues that under our construction, Bergstrom’s express disclosure of forming element 60, and Bergstrom’s explanation of the properties of forming element 60, meets the claimed “perforated polymeric layer” limitation. Pet. 38–41 (citing Ex. 1002 ¶¶ 114–117). Even under Patent Owner’s proposed construction, Petitioner argues, forming element 60 would also allow free flow of liquid bodily waste. Pet. Reply 3– 4 (citing Ex. 1021 ¶¶ 20–23). Importantly, Bergstrom expressly discloses: “suitable materials for the forming element 60 are plastic films, perforated plastic films and reinforced tissue or reinforced nonwoven materials.” Ex. 1004, 10:1–4. This express disclosure is clear. Even though the forming element 60 in Bergstrom might be “typically” liquid-impermeable (Ex. 1004, 9:24–30), that does not preclude a layer that is perforated, particularly where Bergstrom expressly discloses a perforated plastic film as one of the possibilities for forming element 60. Ex. 1004, 10:1–4. Additionally, although Patent Owner focuses on Bergstrom’s disclosure that forming element 60 is “typically liquid-impermeable” (PO Resp. 58–60; Ex. 1004, 9:24–30), we do not view Bergstrom’s use of the word “typically” as mandating that the forming element always be liquid impermeable. We agree that the word “typically” does not mean “always” and that such a reading would render “typically” superfluous. Pet. Reply. 5. We do not find any ambiguity in Bergstrom’s disclosure regarding possible use of perforated plastic films for its forming element 60; whether or not the forming element 60 provides other functions (like stiffness) does not dictate whether it may also be perforated, or be part of a fluid flow control structure. On this point, we credit Petitioner’s arguments and explanation, as supported by Dr. Pourdeyhimi’s testimony. Pet. Reply 6–7; Ex. 1021 ¶ 27–28 (“components of absorbent articles could be multifunctional”).” slip op. at 20

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

    “from the start” (PO Resp. 29), and that “using all or part of [Glaug’s] fluid-acquisition system in place of [Nakazawa’s] diffusion sheet would be antithetical to the teachings of both references” (id. at 35), we agree that the proposed combination of Nakazawa’s structure with the layers of Glaug is sufficiently motivated and reasonably expected to result in a successful article, for the reasons articulated by Petitioner. See, e.g., Pet. 59–65; Ex. 1002 ¶¶ 176–192. Namely, although fluid may flow in both Z directions in Nakazawa (PO Resp. 30), that does not foreclose the combination with Glaug in the manner proposed by Petitioner. See generally Ex. 1002 ¶¶ 176–192; see id. ¶ 184 (detailing the mechanics of the proposed combinations), ¶¶ 188–191 (discussing motivation to combine), ¶ 192 (discussing reasonable expectation of success). The combination can be achieved “either by adding the lower acquisition layer 64 [of Glaug] to diffusion sheet 63 [of Nakazawa], or by replacing diffusion sheet 63 [of Nakazawa] with the two-layer fluid acquisition system 34 [of Glaug],” and as persuasively explained by Dr. Pourdeyhimi, the arrangement constitutes a “fluid flow control structure.” See Ex. 1021 ¶¶ 45–47. Additionally, the diffusion sheet in Nakazawa can be made from the same material as used in Glaug, namely, AquiDry™. Id. ¶¶ 53–55; see also Tr. 17:25–18:3 (“although Glaug does not specify the name AquiDry in its disclosure, Patent Owner’s expert testified that it’s his understanding that Glaug is discussing the AquiDry material, the same material that is in Nakazawa . . . . they disclose using the same material, and Nakazawa says this material work[s]”). When asked if Patent Owner’s expert had any concerns that AquiDry was not the same as between Nakazawa and Glaug, Patent Owner’s counsel replied “They are the same, Your Honor. And we embrace that.” Tr. 46:8–12; see also id. at 58:19 (Petitioner’s counsel commenting about Patent Owner’s counsel: “they agree, AquiDry is used in both Nakazawa and Glaug”). Thus, Patent Owner’s argument that Nakazawa’s diffusion sheet and Glaug’s fluid acquisition layer have different purposes because Nakazawa’s diffusion sheet allegedly must promote fluid flow in the Z-directions, both toward and away from the body (PO Resp. 29–37; Ex. 2004 ¶¶ 26–28, 30– 35)) is not clearly supported by Nakazawa, and is also contravened by the shared disclosure of Nakazawa and Glaug as to the composition of the disputed layer. We have reviewed the complete record, including Patent Owner’s and Mr. Sheldon’s assertions that Nakazawa requires promoting fluid flow in both Z-directions (see id.), but find that Petitioner carries its burden to demonstrate that one of ordinary skill in the art would have been motivated to combine Nakazawa and Glaug with a reasonable expectation of success. On this complete record, Petitioner explains sufficiently why and how a person of ordinary skill would modify Nakazawa’s diffusion sheet, i.e., to use Glaug’s fluid acquisition system, or the lower non-perforated layer of its fluid acquisition system, in Nakazawa, and Petitioner provides well-supported reasons for doing so.” slip op. at 36

  Patent outcomesUS 9,308,138 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,308,138
• R.J. Reynolds Vapor Company v. Healthier Choices Management Corp.All claims unpatentable
  PTAB · Mar 9, 2026 · IPR2024-01458 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1, 7, 8, and 11 are unpatentable as obvious over Lee-based combinations; the Gilbert-based grounds did not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 15 (citing Ex. 1003 ¶ 18). Petitioner further argues a “POSA would have been familiar with electrically powered cigarettes and their components and underlying technologies or similar components and technologies.” Id. “For the purposes of this Response,” Patent Owner “does not dispute Petitioner’s proposed level of skill in the art.” Resp. 17. On this complete record, we adopt Petitioner’s unopposed definition because it appears consistent with the’788 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8

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

    “Patent Owner states that “Petitioner and [Petitioner’s declarant] Mr. Kodama interpret the meaning of the claims based on [Patent Owner’s] construction of the claims by its allegations of infringement in the ongoing litigation.” Resp. 18. Patent Owner further states that for “the purposes of this response,” it “agrees on how the claims are to be construed.” Id. Upon review of the record, we determine that no claim terms require express construction. 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 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 25

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

    “art would not have combined Lee and Gilbert or Levin, particularly with respect to element [1d], we are persuaded by Petitioner’s arguments that one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Petitioner states that the motivation to make the combination would have come from issues “with e-cigarettes at the time, such as metallic taste issues or inhalation risks associated with the use of a metal wire heating element,” and would have explored “heat conducting materials that could vaporize the nicotine liquid without making direct contact with the heating wire.” Pet. 57 (citing Ex. 1003 ¶ 117 (discussing the metallic flavor “dry hit” problem)); see also Reply 18–19. Additionally, Petitioner argues that one of ordinary skill in the art would have implemented “a heating element within a glass bulb to increase the life of the heating element and prevent failure of a device.” Id. at 57–58 (citing Ex. 1009 ¶ 4; Ex. 1003 ¶ 119), 59 (a “POSA would have been motivated to implement a heating element within a glass bulb like that described in Levin for all of the reasons described above” in connection with Gilbert). Petitioner depicts one example of how its proposed combination would incorporate the Gilbert bulb into the Lee device. Pet. 57 (citing Ex. 1003 ¶ 118)). Petitioner additionally relies on Levin’s disclosure that using a bulb will “allow for a consistent and reliable heat source” and “achieve a desired operating temperature when compared to conventional devices.” Id. at 59 (citing Ex. 1009 ¶¶ 56, 49). Mr. Kodama also notes the age and ubiquity of bulb heaters, credibly testifying that “a POSA would have been motivated to implement a bulb heater in the Lee device, and, due at least to the ubiquitous nature of such heaters, the implementation of such a heater would have been well within the knowledge and skill of a POSA.” Pet. 59; Reply 20; Ex. 1003 ¶¶ 39–48, 123. Petitioner also provides sufficient explanation as to “how” and “why” the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 24

  Patent outcomesUS 9,538,788 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,538,788
• Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.All claims unpatentable
  PTAB · Feb 24, 2026 · IPR2024-01199 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over the grounds combining Froitzheim, Gan, and Smith, or Li, Gan, and Smith.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner also states that the Patent Owner “applies the level of ordinary skill in the art Petitioner proposed.” PO Resp. 24. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’053 patent and the prior art of record, we determine that the definition offered by Petitioner and applied by Patent Owner comports with the qualifications a person would have needed to understand the ’053 patent and the prior art.” slip op. at 8

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

    “Petitioner contends that “[t]he claims should be given their plain and ordinary meaning to resolve the issues in this proceeding.” Pet. 17 (citing Ex. 1003 ¶¶ 102–105). Patent Owner states that its Patent Owner Response “adopts petitioner’s proposal to apply the plain and ordinary meaning of the claims.” PO Resp. 24. Accordingly, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner

    “teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And, “teaching away” requires more than the mere expression of a general preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 44

  Patent outcomesUS 8,878,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,878,053
• 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentable
  PTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision

  Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11

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

    “1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. 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 12

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

    “substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36

  Patent outcomesUS 11,806,209 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,806,209
• Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.All claims unpatentable
  PTAB · Jan 12, 2026 · IPR2024-01040 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 9–20 are unpatentable as obvious over the Froitzheim/Gan and Froitzheim/Kwark combinations, with Hartiti or Sivoththaman for the specified dependent claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 8

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

    “Petitioner contends that “the term ‘in situ’ in dependent claim 15 is appropriate for construction because it is defined in the 053 Patent.” Pet. 20. In particular, Petitioner argues that “in situ” refers to processing that occurs after a single manual loading of the substrate into a furnace or other single chamber or multi-chamber processing tool. EX1003, ¶157. Therefore, in the context of claim 15’s diffusion steps, the single, simultaneous drive-in/diffusion of the front and back dopants would constitute “in situ” steps that satisfy the claim. Pet. 56–57 (citing Ex. 1003 ¶ 157); see Ex. 1001, 5:9–18. Patent Owner argues that “in the parallel district court litigation, [Petitioner] advocates for an additional limitation on what constitutes the claimed ‘in situ.’” PO Resp. 35–36. In particular, Patent Owner asserts that Petitioner urges that “in situ” processing “covers only ‘in situ’ diffusion and not ‘in situ’ doping.” PO Resp. 36. But, Patent Owner states that it applies the construction adopted by Petitioner here. PO Resp. 36 Because the outcome of this Decision does not rest on any particular” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Petitioner explains that “Froitzheim and Gan are analogous art because each is in the same field of endeavor—solar cell design” and “[e]ach is reasonably pertinent to the problems of efficiencies and cost-effectiveness of solar cell designs.” Pet. 29 (citing Ex. 1003 ¶94; Ex. 1006, Abstr., ¶¶ 1, 9; Ex. 1007, 245, 249). Petitioner asserts that a person of ordinary skill in the art “would have been motivated to replace Froitzheim’s diffused emitter with a deposited polysilicon emitter along with an oxide layer because Gan taught and suggested that this modification would be an improvement.” Pet. 29 (Ex. 1003 ¶ 95). Gan teaches that “the cell performance can be improved if the diffused-emitter [e.g., of Froitzheim] is replaced with the polysilicon emitter” and that “the J0 [i.e., measure of surface recombination] of the p-type polysilicon emitter (Fig 5) [beneficially] appears to be much lower than what has been previously reported,” which Gan attributes to the thermal oxide interfacial layer. Pet. 29–30 (quoting Ex. 1007, 245, 248); see also Ex. 1007, 249 (“polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells”). Petitioner also argues that the skilled artisan would have had a reasonable expectation of success because the combination is simply” slip op. at 12

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

    “reflected in the Gan Thesis, does not defeat obviousness because “obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007); see also In re Longi, 759 F.2d 887, 896 (Fed. Cir. 1985) (“Only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.”). In addition, “[w]hen prior art contains apparently conflicting references, the Board must weigh each reference for its power to suggest solutions to an artisan of ordinary skill” and, in so doing, “consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The Gan Thesis describes known techniques that the skilled artisan could have employed to improve thin oxide growth. The Gan Thesis states that “it appears that the variation of the oxide thickness results mainly from the oxide-growth step. If this is the case, it is possible that the thin-oxide growth can be improved by performing the oxidation at a lower temperature such that the oxidation rate can be controlled more precisely.” Ex. 2003, 112. Though Patent Owner characterizes this disclosure as “an unproven assumption” or “speculation at best” (Tr. 32:23–26), Drs. Banerjee and Ruby disagree. For example, Dr. Banerjee explains that [l]owering the temperature slows down the chemical reaction between silicon and oxygen in the formation of silicon oxide and thus allows for greater control on the thickness of the oxide layer. As Gan Thesis shows, the oxide thickness increases with time, and slowing that process down by lowering the temperature allows a Skilled Artisan to optimize the oxygen flow time in order to achieve the desired thickness. Ex. 1082 ¶ 19 (citing Ex. 2003, 111). Dr. Banerjee further testifies that “since at least the 1990s,” the ordinarily skilled artisan was equipped with methods to reliably grown oxide layers with controlled thicknesses. Ex. 1082 ¶ 12. “These methods were able to finely tune conditions such as reaction time, temperature, pressure, and oxygen concentration of the oxidation reaction as it occurs to obtain reliable formation of thin oxide layers.” Ex. 1082 ¶ 12; see id. ¶ 19; Ex. 1048; Ex. 1078. Dr. Ruby, Patent Owner’s declarant, offers similar testimony explaining that prior to 2008, the purported date of invention, it was known that lowering the temperature at which the oxide is formed will slow the growth rate of that oxide. Ex. 1081, 103:3–18. Accordingly, the evidence of record suggests that the skilled artisan, at the time of invention, would have had a reasonable expectation of success in the combination of Froitzheim and Gan.” slip op. at 23

  Patent outcomesUS 8,878,053 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,878,053
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.All claims unpatentable
  PTAB · Dec 2, 2025 · IPR2024-00928 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–5, 11–13, and 16–18 are unpatentable as obvious over Schröder and Yuen, LeBoeuf, or LeBoeuf and Wissmar; Schröder alone did not render its challenged claims unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 14. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’034 patent and the references cited in the Petition.” slip op. at 9

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

    “Petitioner has the better position, as we agree with Petitioner that the ’034 patent discloses an embodiment that uses transparent potting as a window, rather than to form the overall form factor and encapsulate components: [Figure] 16C is a perspective view of the WCD with potting material 1630. As described above, the PCB, battery, and components can be disposed within the space. Once disposed therein, a potting 1630 can be provided atop the components and within the cutaway portion 1616. The potting 1630 can be transparent to allow for transmission of light through the cutaway portions 1616. Ex. 1001, 20:51–57. This configuration is shown below in Figure 16C. “[Figure] 16C is a perspective view of the WCD with potting material.” Ex. 1001, 6:1–2. As Figure 16C shows, potting material 1616 forms a window in only a portion of the WCD’s exterior. can be used to encapsulate components and form the overall form factor in some embodiments. E.g., Ex. 1001, 17:4–8, 18:61–62. But Patent Owner does not persuade us that claim 12 is limited to those embodiments. PO Resp. 29; SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). Accordingly, we do not construe claim 12’s “external transparent potting” as requiring material that “forms the ‘overall form factor of the WCD 120, in addition to providing a housing for one or more electronic components,’” as suggested by Patent Owner. PO Resp. 29. Nor do we construe the claim language as requiring material that “also fills the space and encapsulates the components,” as suggested by Patent Owner. Id.” slip op. at 11

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

    “We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position. Although Schröder describes some aspects that are similar to those of a printed circuit board, Petitioner has not sufficiently demonstrated that a person having ordinary skill in the art would understand Schröder’s inlay 12 or carrier foil to be a “printed circuit board,” as recited in independent claims 1, 11, and 16. As an initial matter, while Schröder refers to a “circuit board” in another context, it never refers to the carrier foil or inlay in its finger-ring embodiment as such. See Ex. 1007, 22:48–49; see also Ex. 1079 ¶ 21 (Dr. Anthony acknowledging that Schröder’s only reference to a “circuit board” is “unrelated to Schröder’s finger-ring teachings”). Instead, Schröder describes features of that inlay, explaining that “[t]he carrier foil itself consists of a flexible plastic material, e.g.[,] PET or Kapton” and “antenna coil 8 can for example be printed on the carrier foil by means of a conductive paste” and “a depression is manufactured in the carrier foil, e.g.[,] by milling, lasering, etching, before the chip module 10, the antenna coil 8 and optional further electronic devices are inserted into the depression.” Ex. 1007, 13:26–31, 13:35–37. Schröder further describes that “[a]t least one further foil can be applied to the carrier foil or the ring blank on at least one side” to produce a “multilayer foil composite” that can be “interconnected” by means of “glue” slip op. at 23

  • Expert testimonyPetitioner expert discountedOther

    “show that Schröder’s inlay 12 is a PCB. Relying on testimony from Dr. Anthony, Petitioner asserts that Schröder’s inlay 12 serves as a flexible carrier made of materials “commonly understood to be printed circuit board materials” such as PET and Kapton. Pet. 23 (citing Ex. 1002 ¶ 172; Ex. 1006, 12:28–29). Dr. Anthony did not provide a clear explanation of a person of ordinary skill in the art’s understanding of a PCB in his direct testimony. article describing a PCB as a “laminated sandwich structure of conductive and insulating layers” was an accurate description of a PCB: Q. So is the first sentence of this Wiki page, in your mind, an accurate description of a printed circuit board? A. So, the first sentence, “A printed circuit board (PCB)[] also called [a] printed wiring board, []is a laminated sandwich structure of conductive and insulating layers, each with a pattern of traces, planes, and other features (similar to wires on a flat surface) etched from one or more sheets of copper laminated onto or between sheet layers of nonconductive substrate.” And so your question again was? Q. Is that a fair definition of printed circuit board in your mind? A. It’s a fair description of the general process for circuit boards, layers of conductive traces.” slip op. at 21

  Patent outcomesUS 9,582,034 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 9,582,034
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Eyesmatch Ltd.All claims unpatentable
  PTAB · Nov 21, 2025 · IPR2024-00810 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for patent owner

    “Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14

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

    “persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4. Thus, on the whole, Petitioner’s shifting, scattered arguments do not persuasively address limitation 1[f]. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 would have been obvious over Haan and Francois. And Petitioner’s arguments and evidence addressing claims 2–6, 10–12, 16, and 17 do not cure the foregoing deficiencies in the challenge of claim 1. Pet. 46–52. Accordingly, Petitioner has not shown by a preponderance of the evidence that any of claims 1–6, 10–12, 16, and 17 would have been obvious over Haan and Francois.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We do not agree. Petitioner demonstrates persuasively that a person of ordinary skill would have combined these references “to correct image distortions and provide a more realistic mirror image.” Pet. 52–55; Ex. 1003 ¶¶ 242–249. We are not persuaded by Patent Owner that by specifically disclosing “flipping” the image, Rosenberg is discouraging or teaching away from performing other transformations to achieve its objective of “replicat[ing] the performance of a standard household mirror.” See PO Resp. 35, 38–39 (Patent Owner asserting lack of motivation to combine the references). A reference may be said to “teach away” “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Galderma Lab'ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.Cir.2009)). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” Id. Further, when conducting an obviousness analysis, the Board must consider a prior art reference “not only for what it expressly teaches, but also for what it fairly suggests.” Bradium Techs. LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (quoting In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994)). We are not convinced that the references before us “teach away” from performing the other transformations. In sum, we find for the reasons given that Petitioner has demonstrated by a preponderance of evidence that to a person of ordinary skill, Rosenberg alone or with Park teaches or suggests limitation 1[f].” slip op. at 44

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

    “shows by a preponderance of the evidence that limitations 1[c] and 1[e] are taught or suggested by Rosenberg and Park, in combination. Pet. 58–64; PO Resp. 39–40; Reply 19–20; Sur-reply 19. Petitioner persuades us that limitations 1[c] and 1[e], would have been obvious over Rosenberg and Park, in combination. Pet. 58–64; Reply 19–20. Patent Owner’s counter arguments are unavailing for multiple reasons. Patent Owner’s arguments fail because they improperly attack Rosenberg’s teachings individually, rather than addressing Petitioner’s combination of the references. PO Resp. 39–40; Sur-reply 19. This is fatal to Patent Owner’s arguments. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Petitioner presents persuasive arguments and evidence that the references, in combination, teach limitations 1[c] and 1[e], including persuasive evidence that the references’ tilting, resizing, and zooming meet the claim limitations’ “adaptive transformation mapping . . . to generate modified images that appear to be captured from a different point of view” that “corresponds to an image taken from a different angle and a different distance.” Pet. 58–64 (citing Ex. 1001, 3:26–28; Ex. 1003 ¶¶ 65–67, 253–268; Ex. 1006 ¶¶ 26–28, 50, 52, 61, 75 ; Ex. 1011 ¶¶ 50–51, 59, Figs. 6A–6B, 7, 8, 14, 15; Ex. 1019, 16–20; Ex. 1021, 2:19–27, 17:19–24, 21:60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Reply 19–20 (citing Ex. 1003 ¶¶ 253–268; Ex. 1021, 17:17–23; Ex. 2012, 63:13–22, 111:13–21). Regarding tilting, after noting the ’110 patent’s disclosure (incorporated from the ’109 patent) of performing tilt transformations (Pet. 10–11), Petitioner advances persuasive evidence that Park discloses such a tilting transformation, thereby teaching the claimed “different angle” (id. at 61–63). Regarding resizing and zooming, citing extensive discussion in the ’110 patent (incorporated from the ’109 patent) of resizing and/or zooming to address the effects of varying distance between an object and a camera, Petitioner and Dr. Karam explain that the prior art’s zooming and resizing meet the claimed “different distance.” Pet. 63 (Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11); Ex. 1003 ¶ 265 (citing Ex. 1001, 3:26–28; Ex. 1021, 17:19–23, 21:57–60, 23:65–24:9, 25:46–48, 30:4–11, Fig. 11). In its counterarguments, Patent Owner suggests that zooming and resizing do not account for “occlusion effects,” but Patent Owner does not persuasively tie this argument to the ’110 patent, failing to cite any portion of the ’110 patent that evinces its invention addresses such effects. PO Resp. 23–25, 39–40.” slip op. at 39

  Patent outcomesUS 8,982,110 unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentable
  PTAB · Nov 6, 2025 · IPR2024-00867 · APJ Kevin C Trock · IPR · Final written decision

  Claims 11, 12, 16, 17, 19, 20, and 84 are unpatentable as obvious over Nozaki and Haitani, alone or combined with Graham or Kim.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ descriptions of the level of skill in the art are very similar, with only a slight difference in the number of years of work experience suggested. Petitioner states that “[a]lthough the experts propose slightly different POSITA definitions, the differences are immaterial to the analysis here.” Pet. Reply. 1. Patent Owner does not believe the two definitions are materially different, and states that “the arguments herein do not change under either definition. PO Resp. 8. Petitioner’s description of a person of ordinary skill appears to be consistent with the technical complexity of the subject matter described in the ’848 patent. This understanding is supported by the testimony of Petitioner’s declarant, Dr. Bederson, who states that he is “well acquainted systems and methods described in the ’848 patent.” Ex. 1005 ¶ 36. Accordingly, we continue to use Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. B. Claim Construction” slip op. at 12

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

    “the meaning of the claim term “mode” as it is used in the ’848 patent and as one of ordinary skill in the art would understand it at the time of the invention. First, the parties do not necessarily disagree as to the meaning of the term “mode.” Patent Owner asserts that a person of ordinary skill in the art “would understand ‘mode’ to mean “an operational state that a system has been switched to.” PO Resp. 13. Petitioner “do[es] not necessarily object to the concept of a ‘mode’ as an operational state,” but does object to how Patent Owner applies the term. Pet. Reply 1. Petitioner objects to Patent Owner’s “application of its construction,” which, Petitioner argues, “is far narrower than the words alone suggest.” Id. Second, the intrinsic evidence, including the claims and the ’848 specification, makes it readily apparent what the ordinary and customary meaning of the term “mode” would be to one of ordinary skill in the art at the time of the invention. Based upon our consideration of the claims and the ’848 specification, we find that the term “mode,” as it is used by the ’848 patent, means a “state,” “condition,” or “operational state” of a recording device, such as a video camera, that is selected by a user and may include a selection function using threshold values.” slip op. at 19

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “We disagree with Patent Owner. In determining obviousness, the scope of relevant prior art “necessarily encompasses not only the field of the inventor's endeavor but also any analogous art.” In re GPAC Inc., 57 F.3d 1573, 1577–78 (Fed. Cir. 1995). A reference qualifies as prior art for a determination under § 103(a) when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). A reference is analogous to the claimed invention when it is from the same field of endeavor, regardless of the problem addressed. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Similarity in the structure and function of the invention and the prior art is indicative that the prior art is within the inventor's field of endeavor.” slip op. at 37

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

    “Here, Petitioner provides a persuasive rationale as to why a person of ordinary skill in the art would combine the teachings of Nozaki, Haitani, and Graham as described in the Petition. For example, Petitioner explains that a person of ordinary skill in the art would have recognized that Nozaki’s facedetection data could be used as an additional method by which to identify Figure 5 of Nozaki could be configured as a scrollable list of keyframe data similar to Graham. Pet. 37–38 (citing Ex. 1005 ¶ 141). Petitioner also explains that a person of ordinary skill in the art would have been motivated to implement this modification to improve the efficiency of searching for specific moments within a long video file. Pet. 38 (citing Ex. 1005 ¶ 142). Petitioner also explains that Graham’s video segmenting methods address this need and could have been easily implemented in the Nozaki device. Pet. 38 (citing Ex. 1005 ¶ 142). Dr. Bederson testifies that such implementation would have been within the skill of a person of ordinary skill in the art. Ex. 1005 ¶ 142. Accordingly, based upon the complete record, we are persuaded that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the time of the claimed invention would have had a reasoned basis to combine the teachings of Nozaki, Haitani, and Graham in the manner described and would have had a reasonable expectation of success in that endeavor.” slip op. at 64

  Patent outcomesUS 10,176,848 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,176,848
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentable
  PTAB · Nov 6, 2025 · IPR2024-00717 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–11 are unpatentable under § 103 over the Chinn-based and Kim-based combinations listed in the decision.

  RulingsFinal written decision

  • Expert testimonyOther

    “Accordingly, based upon the complete record, we are persuaded that” slip op. at 39

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

    “d. Conclusion as to Independent Claim 1 Based on the complete record, we are persuaded that Petitioner has” slip op. at 73

  Patent outcomesUS 11,223,757 unpatentable
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,223,757

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.