• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand

  Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6

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

    “We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22

  Patent outcomesUS 11,004,271 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentable
  PTAB · Feb 17, 2026 · IPR2024-01187 · APJ Garth D Baer · IPR · Final written decision

  Claims 1, 2, 8–11, and 16 are unpatentable as obvious over Ingle and Hasei; claims 3, 5, and 6 were not shown unpatentable because the Hanamura-based grounds lack the claimed trench.

  RulingsFinal written decision

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

    “isolation, rather than in the claims’ context, and in light of the ’492 patent’s specification. In the trench/layers context of the ’492 patent, the word in requires more than it does in the circle/square context.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. Patent Owner does not dispute Petitioner’s proposed definition. We adopt Petitioner’s uncontested proposed definition because it is consistent with the disclosures of the asserted prior art.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “rather than the combination of Ingle’s capacitor and Hasei’s droplet discharge application that Petitioner asserts. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Even if Ingle falls short of teaching structured application for its capacitor’s cathode, as Patent Owner argues, that does not undermine Petitioner’s challenge because Petitioner proposes using Hasei’s structured application (i.e., a droplet discharge device) to form the cathode of Ingle’s capacitor. See Pet. 24–25. Patent Owner’s additional argument that “Hasei contains no discussion of forming capacitors” (PO Resp. 36; see PO Sur-reply 17–18) is similarly flawed—it attacks Hasei individually, while ignoring Ingle’s capacitor teaching. We agree with Petitioner—the combination of Ingle and Hasei teaches structured application of the capacitor’s cathode. In addition, we disagree with Patent Owner that “Petitioner provides no reason why a POSITA would have extended Hasei’s method for producing its OLED to a capacitor.” PO Resp. 36; see PO Sur-reply 17 (asserting “pure conjecture”). To the contrary, as noted above, Petitioner explains, with relevant support from Hasei, that its structured application method reduced electrode-material waste and shortened manufacturing times as compared to photolithography. Pet. 25 (citing Ex. 1007 ¶¶ 5, 7). Given those benefits, Petitioner has articulated sufficient reasoning with rational underpinning to support that its proffered combination would have been obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 13

  Patent outcomesUS 9,257,492 mixed
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,257,492
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 14, 2026 · IPR2024-01089 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 2, 9–11, 13, 15, 16, 56–64, and 84 are unpatentable as obvious; claim 14 was not shown unpatentable because the motivation to combine the gesture teachings was not established.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “In our Decision on Institution, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advanced-level degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 9. Additionally we did not adopt Petitioner’s proposed additional requirement that one of ordinary skill of the pertinent technologies employed by the ’212 patent.” Id. We adopted, for the purposes of the Decision on Institution, the portion of the definition proposed by Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” as “consistent with the problems and solutions in the ’212 patent and prior art of record and . . . supported by declarant testimony.” Id. Patent Owner adopted this definition (PO Resp. 12–13), noting Dr. Cockburn’s testimony regarding this definition (Ex. 2006, 12:15– 21). Patent Owner’s declarant, Dr. Madisetti, also agreed with and adopted this definition. Ex. 2005 ¶¶ 23–25. For the same reasons discussed in the Decision on Institution, we again adopt this definition.” slip op. at 8

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

    “C. Claim Construction The parties’ papers include some discussion of claim construction. PO Resp. 13–17; Pet. Reply 1–2; PO Sur-reply 2–3. Each party asserts, and we agree, that there is no controversy that would require us to decide any claim construction issue. Pet. Reply 2; PO Sur-reply 3; 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 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

  Patent outcomesUS 10,671,212 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,671,212
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 14, 2026 · IPR2024-01088 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1, 9, 12, 19–22, 24–32, 36–43, 47, 58, 59, 63, 71, 74, 81–84, 86–94, 97–105, 109, 119–121, and 124 are unpatentable over Chaudhri, Martyn, and Griffin; claims 35 and 57 are not.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we noted that Petitioner’s definition left it unclear whether the bachelor’s degree in the proposed definition would be considered by Petitioner to be “an advanced-level degree,” and did not adopt the portion of the definition relating to the substitution of years of experience for a degree. Dec. on Inst. 9. Additionally we did not adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Id. We adopted, for the purposes of the Decision on Institution, the portion of the definition proposed by Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” as consistent with the problems and solutions in the ’758 patent and prior art of record and supported by declarant testimony. Cockburn’s testimony regarding it (Ex. 2007, 9:7–23), and, for the same reasons discussed in the Decision on Institution, we adopt it here.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We determine that Petitioner has sufficiently shown that one of ordinary skill in the art would have combined the snapshot menu and pressand-hold gesture of Martyn with Chaudhri as Petitioner proposes, resulting in a device that provides a contextual shortcut sub-menu of common application functions in response to a touch-and-hold user input. We credit Dr. Cockburn’s testimony in Petitioner’s showing that Martyn’s contextual allow the user to accomplish recurring tasks more quickly. Pet. 15–17 (citing, inter alia, Ex. 1003 ¶¶ 61–62, 66–67). Contrary to Patent Owner’s contentions, Petitioner provides a showing of a motivation to use, in the resulting combination, both Martyn’s menu and its mechanism for calling the menu. Pet. 15–17 (citing Ex. 1003 ¶¶ 49–53, 63); Ex. 1067 ¶ 21. We credit Dr. Cockburn’s supported testimony of the motivation for the combination Petitioner proposes, using the teachings of Martyn identifying its App Snapshot called through a press-and-hold as allowing a user access to multiple options pertaining to one application at one time in one menu, for ease and speed of navigation. Pet. 15–18; Ex. 1003 ¶¶ 61, 63 & n.3, 68 (citing Ex. 1005 ¶¶ 4–8, 15); Ex. 1067 ¶¶ 20, 21. Additionally, we credit Dr. Cockburn’s testimony regarding the analogousness of the touch-and-hold mechanism to trigger the menu to the press-and-hold trigger for the menu in Martyn, which Patent Owner criticizes as unsubstantiated (PO Sur-reply 18) but we find to be supported by record evidence. Pet. 16 (citing Ex. 1003 ¶¶ 49–53, 63); Reply Br. 17 (citing Ex. 1067 ¶¶ 16–22), 20 (citing Ex. 1067 ¶¶ 30) ; Ex. 1003 ¶¶ 53 (citing, inter alia, Ex. 1022 ¶ 183), 63 & n.3.” slip op. at 18

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

    “at first contending that these limitations require a continuous touch meeting both limitations; however, Patent Owner withdrew the request to construe the claim to require one continuous gesture to meet the two limitations, agreeing with Petitioner’s assertion that either one continuous gesture or two separate gestures could meet the limitations. PO Resp. 15–18; Pet. Reply 3– 5; PO Sur-reply 3–4; Tr. 28:20–29:2. Because we agree with the parties that this is the correct construction, there is no remaining controversy regarding this construction that would require us to decide any claim construction issue. 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 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 foundDecided for petitioner

    “We determine that Petitioner has sufficiently shown that one of ordinary skill in the art would have combined the snapshot menu and pressand-hold gesture of Martyn with Chaudhri as Petitioner proposes, resulting in a device that provides a contextual shortcut sub-menu of common application functions in response to a touch-and-hold user input. We credit Dr. Cockburn’s testimony in Petitioner’s showing that Martyn’s contextual allow the user to accomplish recurring tasks more quickly. Pet. 15–17 (citing, inter alia, Ex. 1003 ¶¶ 61–62, 66–67). Contrary to Patent Owner’s contentions, Petitioner provides a showing of a motivation to use, in the resulting combination, both Martyn’s menu and its mechanism for calling the menu. Pet. 15–17 (citing Ex. 1003 ¶¶ 49–53, 63); Ex. 1067 ¶ 21. We credit Dr. Cockburn’s supported testimony of the motivation for the combination Petitioner proposes, using the teachings of Martyn identifying its App Snapshot called through a press-and-hold as allowing a user access to multiple options pertaining to one application at one time in one menu, for ease and speed of navigation. Pet. 15–18; Ex. 1003 ¶¶ 61, 63 & n.3, 68 (citing Ex. 1005 ¶¶ 4–8, 15); Ex. 1067 ¶¶ 20, 21. Additionally, we credit Dr. Cockburn’s testimony regarding the analogousness of the touch-and-hold mechanism to trigger the menu to the press-and-hold trigger for the menu in Martyn, which Patent Owner criticizes as unsubstantiated (PO Sur-reply 18) but we find to be supported by record evidence. Pet. 16 (citing Ex. 1003 ¶¶ 49–53, 63); Reply Br. 17 (citing Ex. 1067 ¶¶ 16–22), 20 (citing Ex. 1067 ¶¶ 30) ; Ex. 1003 ¶¶ 53 (citing, inter alia, Ex. 1022 ¶ 183), 63 & n.3.” slip op. at 18

  Patent outcomesUS 10,656,758 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,656,758
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 8, 2026 · IPR2024-01091 · APJ Jameson Lee · IPR · Final written decision

  Claims 30 and 62 are unpatentable over the respective Kim and Burrough combinations; claims 1, 32, 34, and 64 were not shown unpatentable because the cited gestures lacked a common starting point.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11

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

    “gesture” must refer back to the same gesture reflects the plain meaning of the claim language. In each independent claim, the structure and usage of the language in dispute are the same. Only one gesture detection is recited, and there is no language reasonably indicating repetition or reiteration of detection for any reason at any time. Patent Owner’s position that to meet “the gesture” recitations, prior art “gestures” must all share a common starting point also makes sense and is appropriate. The same gesture must start from the same starting point or else it is not the same gesture. Specifying the understanding this way avoids treating two similar gestures as the same gesture, if they have different starting points. For instance, two taps may be the same in every way, except for their starting points. They are not the same gesture in the context of these claims.” slip op. at 19

  • Expert testimonyOther

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 10. We continue to adopt Petitioner’s stated level of ordinary skill in the art.3 C.” slip op. at 11

  • BurdenNot shown unpatentable

    “Neither the tap-and-hold gesture in the bottom path of Kim’s Figure 7 nor the “long press input” and “long press event” of Kim such as that shown in Kim’s Figure 5 is the double-tap gesture Petitioner relies on to satisfy limitation [1.f]. Neither has been shown to have a common starting point with the double tap. Thus, Petitioner’s showing is inadequate. Limitation [1.i] recites: [1.i] when the magnitude of the duration of the gesture being detected on the touch screen on the object is greater than a second magnitude threshold, perform another operation. Pet. v. Petitioner explains: Kim teaches or renders [1.i] obvious. APPLE-1003, ¶62. Kim further describes “another operation” that is performed when the magnitude of the duration of the gesture is greater than a second magnitude threshold—specifically, a minimum threshold to be deemed an intentional touch. Specifically, Kim explains that, “[i]f detecting a user gesture, namely, if receiving an input event from a user through the touch screen, the mobile device determines the type of an input event.” APPLE-1004, [0053]. Kim states that, “[i]f an interrupt is not a request for the activation of the zoom mode as the result of determination in step 205, the mobile device can perform some action in connection with an interrupt (step 207),” shown in Figure 2a below. APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶63. [Figure 2A of Kim is a flow diagram of a method for a touch-based control in a zoom mode (Ex. 1004 ¶ 20)] Kim additionally explains that if the mobile device determines that a detected user gesture does not correspond to any particular input event, “the mobile device disregards the received input event.” APPLE-1004, [0053]. Based on Kim’s disclosure of “disregarding” a received input, a POSITA would have understood that, for the detected interrupt (step 203) to be sufficient to cause the mobile device to “perform other action” (step 207), a magnitude greater than a minimum threshold value (e.g., the minimum threshold of an intentional user input) is relied upon, or rendered obvious, by Kim. APPLE-1004, FIG. 2a; APPLE-1003, ¶64. Thus, when the magnitude of the gesture is greater than a second magnitude threshold, the device “performs other action” (e.g., display requested menu). APPLE- 1004, [0050], FIG. 2a; APPLE-1003, ¶64. A POSITA would have understood that such an interrupt would be caused by a gesture that is longer in duration than the second threshold (as necessary to avoid the gesture from being disregarded), shorter than the duration necessary for a long press threshold, and a different gesture than a double tap gesture. APPLE-1003, ¶64. Pet. 24–26. As explained by Petitioner, the interrupt gesture relied on by” slip op. at 40

  Patent outcomesUS 10,936,114 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,936,114
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9

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

    “First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27

  Patent outcomesUS 10,656,755 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,656,755
• Google LLC v. Eyesmatch Ltd.Some claims unpatentable
  PTAB · Nov 21, 2025 · IPR2025-00296 · 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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9

  • 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

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

    “Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11

  • 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.” slip op. at 23

  Patent outcomesUS 8,982,110 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,982,110
• Google LLC v. Security First Innovations, LLCSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedOther

    “had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17

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

    “Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21

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

    “Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25

  Patent outcomesUS 11,178,116 mixed
  § 103 obviousnesscites Phillips
  Patents in suitUS 11,178,116
• Meta Platforms, Inc. v. Angel Technologies Group LLCSome claims unpatentable
  PTAB · May 7, 2024 · IPR2023-00058 · APJ Sharon Fenick · IPR · Final written decision

  Claims 1–14 and 16–26 are unpatentable as obvious over Sharpe, with certain claims also supported by Sharpe and Eintracht; claim 15 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In the Decision on Institution, we removed the open-ended term “at least” from Petitioner’s proposed definition and adopted that amended 5 On the current record, no party has raised any arguments relating to objective evidence of nonobviousness. See Pet. 77. person of ordinary skill in the art “would have a bachelor’s degree in computer science, electrical engineering, computer engineering, or a similar technical field, with two years of experience in the field of networked and Web-based media applications” and that “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” PO Resp. 16 (citing Ex. 2021 ¶ 44). We adopt Patent Owner’s definition, which is consistent with the specification of the ’291 patent and the prior art and supported by the testimony of both experts.” slip op. at 11

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.”’ Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner does not appear to use the claim constructions it discusses in the Petition in its unpatentability arguments and Patent Owner does not raise the proper construction of these terms in its Response or Sur-reply. In this case, with respect to “user identifier” and “contact,” these terms do not require construction to reach our decision with respect to patentability, and therefore we do not provide any constructions for these terms. See Realtime Data, 912 F.3d at 1375. slip op. at 12

  • BurdenDecided for petitioner

    “Patent Owner’s Response shows that Patent Owner had notice that Petitioner’s arguments were styled as based on obviousness. PO Resp. 18. Our Decision on Institution (at 7, 24–27) indicated the Board’s understanding of the Petition as presenting an obviousness ground over Sharpe, Petitioner’s Reply (at 2–5, 13–18) clarified this further, and Patent Owner has had an opportunity to respond to the obviousness theories presented throughout the proceeding. Thus, we perceive no APA issue; Patent Owner has had notice and a fair opportunity to be heard on these matters. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015) (in an IPR, “the Administrative Procedure Act requires the PTO to timely inform a patent owner of the matters of fact and law asserted in an inter partes review of its patent, to give all interested parties opportunity for . . . the submission and consideration of facts and arguments . . . and hearing and decision on notice, and to permit a party to submit rebuttal evidence, and to conduct such cross-examination as may be required for a full and true disclosure of the facts” (internal quotations and citations elided)). With respect to the argument that the Petition was deficient as lacking a showing of a reasonable expectation of success, we agree with Petitioner when there is a combination of teachings, including from the same reference. Pet. Reply 16–17; Stepan, 868 F.3d at 1346 n.1 (“Whether a rejection is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.”). We note that Petitioner – in describing the collection of name information (e.g., for presentation in a drop down box of a workspace as in Sharpe’s Figure 4) during registration as a “conventional design choice” and in citing Dr. Bederson’s testimony to this effect – provides argument and evidence regarding an expectation of success in using the username. Pet. 34 (citing Ex. 1003 ¶ 168); see Sisvel S.p.A. v. TCT Mobile Int’l Ltd., No. 2023-1123, 2024 WL 1173047 at *3 (Fed. Cir. March 19, 2024) (nonprecedential) (finding a reasonable expectation of success where an expert testified regarding a “simple design choice” and the prior art reference noted a solution as “a good candidate”). With respect to arguments in the Reply that relate to obviousness, including arguments that the use of a username was a design choice (PO Sur-reply 2–3), we find that Petitioner’s arguments in the Reply “properly expand[] on and [are] a fair extension of its previously raised . . . argument.” Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023). In the Petition, Petitioner argued that one of ordinary skill would have understood that a username would have been “typically implemented” as a unique user identifier that would support the querying of the database and storing information in a database. Pet. 25–26 (citing Ex. 1003 ¶¶ 141– 179). The Petition further describes the knowledge of one of ordinary skill regarding the “typical implement[ation]” of a username as a unique identifier and that the use of such a unique identifier supports querying a database, particularly in the circumstances of Sharpe. Pet. 26 (citing Ex. 1003 ¶¶ 142–143). The Reply further explains that in view of Sharpe’s teachings, the username is the most obvious design choice because a username is one such unique identifier. Pet. Reply 3. We determine the discussion in the Reply describing the use of a username rather than the user’s personal name as a design choice for use as a primary key (Pet. Reply 3–4) is the same argument as, or a fair extension of, these contentions in the Petition.” slip op. at 19

  • Strike new argumentNew argument consideredDecided for petitioner

    “With respect to arguments in the Reply that relate to obviousness, including arguments that the use of a username was a design choice (PO Sur-reply 2–3), we find that Petitioner’s arguments in the Reply “properly expand[] on and [are] a fair extension of its previously raised . . . argument.” Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023). In the Petition, Petitioner argued that one of ordinary skill would have understood that a username would have been “typically implemented” as a unique user identifier that would support the querying of the database and storing information in a database. Pet. 25–26 (citing Ex. 1003 ¶¶ 141– 179). The Petition further describes the knowledge of one of ordinary skill regarding the “typical implement[ation]” of a username as a unique identifier and that the use of such a unique identifier supports querying a database, particularly in the circumstances of Sharpe. Pet. 26 (citing Ex. 1003 ¶¶ 142–143). The Reply further explains that in view of Sharpe’s teachings, the username is the most obvious design choice because a username is one such unique identifier. Pet. Reply 3. We determine the discussion in the Reply describing the use of a username rather than the user’s personal name as a design choice for use as a primary key (Pet. Reply 3–4) is the same argument as, or a fair extension of, these contentions in the Petition. For these reasons, we do not find the ground of obviousness over” slip op. at 20

  Patent outcomesUS 9,959,291 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,959,291
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill in the Art” slip op. at 6

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

    “2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31

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

    “reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” 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)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53

  Patent outcomesUS 10,945,807 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,807

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.