• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

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

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

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

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

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

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentable
  PTAB · Nov 26, 2025 · IPR2024-00984 · APJ Nabeel U Khan · IPR · Final written decision

  Claims 6 and 7 are unpatentable as obvious over Meulen and Chao; claim 1 was not shown unpatentable because Meulen does not disclose transforming an image captured by its camera.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art in the relevant field “would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras,” or alternatively “would have four years of experience working on image or video processing, or digital cameras.” Pet. 6. Petitioner further argues that an “advanced graduate degree” may “make up for the work experience.” Id. (citing Ex. 1002 ¶¶ 33–34). “Patent Owner applies Petitioner’s proposed level of skill.” PO Resp. 4–5 (citing Ex. 2027 ¶¶ 19–20). We adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’413 patent and the cited prior art.” slip op. at 9

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

    “From the outset we note that the words of the claim recite “non- uniformly shift[ing] the pixels” and do not recite a “non-linear” transformation. This favors Petitioner’s position, which is based directly off the definition of “non-uniform,” over Patent Owner’s position, which substitutes “non-linear” for “non-uniform.” Generally, then, we would determine the ordinary and customary meaning of the claim term in the context of the entire Specification. Here, however, the ʼ413 patent does not mention “uniform” or “non-uniform” shifting of pixels anywhere except in the claims. The Specification, therefore, provides limited guidance, by itself, as to the ordinary and customary meaning of the term. Nonetheless, even reviewing the portions of the Specification cited by the parties, we see no clear or unambiguous effort to limit the challenged claims to require only non-linear transformations in which the pixels to which a transformation is applied do not have the same amount of shift. is not non-linear. Pet. Reply 1. Specifically, Petitioner argues that the center circle of Figure 2B maintains the original circular shape after the transformation is applied to the image which contradicts Patent Owner’s argument that no two pixels will have the same amount of shift. Pet. Reply 1–2. We agree. In Figure 2B of the ʼ413 patent, the center of the image is chosen to be the region of interest. Ex. 1001, 4:19–21. After the input image goes through linear scaling (step 204) and then non-linear warping (step 206) the circles become more vertically compressed as they approach the top and bottom edges and more horizontally stretched as they approach the left and right edges. Id. at 4:22–30. But “the center circle is fully corrected so that it maintains the original circular shape of the corresponding circle in the input image 212.” Id. at 4:23–25. This means that at least some pixels, such as those of the center circle, undergo the same amount of shift after being transformed.” slip op. at 11

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

    “readable instructions” of claims 1 and 2 must occur in a particular order. Specifically, Patent Owner argues that the step of “determine a portion within the input image” must occur after “obtain[ing] an image” and before “apply[ing] a transformation to the input image.” PO Resp. 17 (citing Ex. 2027 ¶ 59). Petitioner argues, on the other hand, that the specification does not require such an order and, in fact, describes an embodiment where such an order is not followed. Pet. 3. We determine that the “determine a portion within the input image” step does not need to occur after the “obtain an image” step and before the “apply a transformation to the input image” step. As Patent Owner itself points out, claims 1 and 2 are apparatus and system claims respectively, and an ordering of the limitations of such claims is not necessary. PO Resp. 17. Even if we were to treat the apparatus and system claims as reciting the steps of a method, “as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order.” Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008) (citing Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342–43 (Fed. Cir. 2001)). We see nothing in the claims that would cause us to break this general rule. Patent Owner argues that the claims imply a “specific order because the ‘determine a portion’ requirement operates on ‘the [obtained] input image’ and defines the ‘portion’ that is necessary for the 23; Ex. 2027 ¶ 59). Although the steps are recited in a specific order in the claim, as they necessarily must be, the claim does not expressly specify that the certain steps must occur before or after other instructions, nor does logic imply such a requirement. For example, if certain characteristics of the image are known before the image is obtained (e.g. the size, dimensions, resolution, aspect ratio, or content etc.) the determination of the portion of the image could be made before the image is obtained. These characteristics may be based on the specific device taking the image or the subject matter of the image, both of which may be known before the image is captured or obtained. It is, therefore, not necessary that the image be obtained in order for a portion of the image to be determined. Similarly, we do not find the written description to expressly or implicitly specify an order the claimed step of “determine a portion of the input image.” For example, the written description of the ʼ413 patent states that in Figure 2B “the center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction as the frame boundary is approached.” Ex. 1001, 4:19–22. Patent Owner emphasizes that this disclosure implies that an input image is obtained before the center portion is chosen. PO Resp. 19 (citing Ex. 1001, 3:63–64, 4:19–22). But the description of this embodiment does not expressly recite an order. For example, the description of Figure 2A explains that “an input image is obtained” in step 202, “the image is then scaled” in step 204, and a “non-linear warping is then applied” in step 206. Ex. 1001, 3:63–4:3. This description does not mention “determin[ing] of a portion of the image” as a separate step or as part of the listed steps, and therefore, does not specify an order in which this step must occur. is configured so that some areas of the image are fully corrected geometrically, while some other areas are distorted. . . . [T]he center of the image is chosen to be the region of interest that is most fully corrected and the distortion increases in each direction.” Id. at 4:17–19. This excerpt from the ʼ413 patent, which the Patent Owner specifically relies on (PO Resp. 19), also does not specify an order in which the determination step (choosing of the region of interest) takes place. Moreover, because the ʼ413 patent states that the warp module is configured so that some areas are fully corrected while others are not, the determination step could take place at the time the warp module was configured, presumably before the image was obtained. Finally, the ʼ413 patent states that “in the case, of video, the area may dynamically change between images (e.g. to follow a moving object).” Ex. 1001, 4:34–36. Patent Owner argues that this description “requires first obtaining the image in order to locate the object that is being followed.” PO Resp. 19–20. This embodiment is related to the case of video or a moving object, which the challenged claims do not mention. We, therefore, decline to limit the scope of the claim based on this embodiment. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”).” slip op. at 14

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

    “Having reviewed the parties’ arguments and cited evidence we determine Petitioner has established, by a preponderance of the evidence, that a POSITA would have been motivated to combine Meulen and Chao. For example, Petitioner argues that “[i]t would have been obvious that when performing image scaling, pixels from the input to output positions are shifted based on a scaling factor.” Pet. 91. Meulen teaches scaling but does not provide the details regarding scaling. E.g., Ex. 1007, 1:55–56, 4:37–49. We agree that in light of Meulen’s disclosure of scaling, a POSITA would have looked to other references, such as Chao, for further details on how to perform scaling. Dr. Katsaggelos provides credible support, testifying that “Meulen mentions ‘compression and/or scaling,’ and provides details on how to perform compression. But Meulen does not disclose the details of how to perform scaling. A POSITA when faced with Meulen and having the knowledge about scaling would have been motivated to turn to a prior art reference that discloses the details of scaling.” Ex. 1002 ¶ 262. Patent Owner argues that Petitioner provides no motivation to combine other than asserting that it involves combining prior art elements. PO Resp. 35 (quoting Pet. 92). As explained above, however, Petitioner does more than just assert that the motivation involves combining prior art elements. Instead, Petitioner explains that Meulen discusses both compression and scaling, and provides details regarding compression but does not provide details on how to scale. Pet. 91–92; Ex. 1002 ¶¶ 262–262. Thus, Meulen teaches that scaling was a known technique. See Hybritech, (“a patent need not teach, and preferably omits, what is well known in the art”). Dr. Katsaggelos testifies that, in this situation, a POSITA would have looked to Chao for details regarding scaling. Ex. 1002 ¶¶ 262–263. We determine this establishes, by a preponderance of the evidence, that a POSITA would have had reason to combine Meulen’s teachings with Chao. Patent Owner draws a distinction between Meulen and Chao, arguing that “Meulen is concerned with modifying content from a media source to be displayed on a device’s screen while Chao, by contrast, is directed to changing the aspect ratio of a document intended for printing.” Id. at 36 (citing Ex. 2027 ¶¶ 89–90). Patent Owner’s argument is contradicted, however, by Chao’s disclosure which states that “after all the background and foreground elements in the image have been resized . . . [t]he image may be output by displaying the image on or as part of: a display screen such as a computer monitor, camera screen, printer screen, printed page, projected image, or the like.” Ex. 1008 ¶ 32. Patent Owner argues that Meulen’s system avoids distortion near the middle where the user’s focus is more likely to be, while Chao, on the other hand, is directed to avoiding distortion of stylized borders on differently sized pages. PO Resp. 36–37 (citing Ex. 1006, 1:26–29; Ex. 1008 ¶¶ 1, 25; Ex. 2027 ¶¶ 91–92). This argument reads the prior art too narrowly and does not address Petitioner’s combination. Petitioner does not rely on Chao for its teaching of avoiding distortion near the borders of the image, but rather on its teaching of scaling the image while maintaining the design intent of the original image. Ex. 1008 ¶ 22; Ex. 1014 ¶ 67. Thus, Petitioner is applying Chao’s techniques of scaling (regardless of where the area of 92. Finally, Patent Owner argues that Chao’s approach of stretching/shrinking only the background and uniformly scaling entire foreground objects is suitable for graphic design but incompatible with Meulen which is concerned with adapting externally derived media source content for display on a fixed size screen. PO Resp. 37–38 (citing Ex. 2027 ¶ 93). We disagree with Patent Owner’s argument because it does not address Petitioner’s combination. Petitioner relies on Chao’s teaching of stretching/shrinking of background elements and applies that stretching/shrinking to Meulen’s images displayed on its screen. Pet. 91–92 (citing Ex. 1008 ¶¶ 28, 63; Ex. 1002 ¶ 263). The fact that Chao applies its teaching to graphic design does not prevent a POSITA from applying those teachings to Meulen’s media content displayed on its screen.” slip op. at 20

  Patent outcomesUS 10,015,413 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,015,413
• Apple Inc. v. Resonant Systems, Inc.Some claims unpatentable
  PTAB · Oct 9, 2025 · IPR2024-00806 · APJ Norman H Beamer · IPR · Final written decision

  Claims 1–8, 15–17, and 20 are unpatentable under § 103; claims 14 and 19 were not shown unpatentable because the proposed paramagnetic flux paths in Wakuda lacked adequate support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 33. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’830 patent specification.” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “The parties agree that independent claims 1, 19, and 20 include means plus function limitations under 35 U.S.C. § 112 ¶ 6.8 Pet. 3–7; PO Resp. 6–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claims 1, 19, and 20 are means plus function limitations. Pet. 3–7; PO Resp. 6–14. Construing a means plus function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownDecided for petitioner

    “Therefore, the specification clearly links the function of “control[ing] supply of power from the power supply to . . . cause the moveable component to oscillate at a frequency . . . specified by one or more stored values” at least to portions of steps 706 and 708 of the flow diagram algorithm of Figure 7A, as described above. Thus, the control component requires a microprocessor and memory with algorithmic structure including a timing algorithm or similar coding for creating a control output signal that flips to control the direction of current flow through a coil (e.g., coil 514, Fig. 5, coil 626, Fig. 6), where the coil is structure that corresponds to the recited “driving component,” as noted above.11 We adopt the District Court’s conclusion in the Apple litigation that the “control component” structure itself does not require an H-bridge switch, but only requires that the processor generates the “d” inputs to the switch; and further that the structure does not require does not require computing initial default values as specified in step 702 of Figure 7A (i.e., values not specified by a user). Ex. 3001, 30–33, 35. This is in accord with settled law 11 “Rather than using a formal timer mechanism, certain implementations may simply employ counted loops or other simple programming techniques for periodically carrying out tasks.” Ex. 1001, 7:17–20. that limits the structure to that necessary to perform the claimed function. 12 By the same token, we modify the District Court’s construction to the extent it would require, based on such steps as 706, 710, and 716, a specific order of the steps of generating the “p” and “d” values. The claims only require the control component to control the power supply to cause oscillation at a specified frequency and amplitude, but do not require the frequency value to be generated before the amplitude value, or vice versa.” slip op. at 18

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

    “to include the ability disclosed in Ramsay to allow a user to customize and store parameters associated with haptic effects, such as creating “haptic track files” that specify variations in the amplitude and frequency of the effect over time to achieve a desired effect. Pet. 46–47 (citing Ex. 1006 ¶¶ 15, 25– 28, 37; Ex. 1003 ¶¶ 192–193). Petitioner argues that this combination would have been motivated by the desire to expand the functionalities of haptic devices to allow end users to create and customize haptic effects, to provide a fuller haptic experience, and to be able to store haptic effects to save processing power compared to real-time generated effects. Id. at 47–49 (citing Ex. 1006 ¶¶ 14–15, 30, 47, 53–57; Ex. 1003 ¶¶ 194–196). Petitioner argues that this making combination would have had a reasonable expectation of success given that both references deal with linear actuators, both disclose storing frequency and amplitude values, and the combination involves routine knowledge of software techniques. Id. at 49–50 (citing Ex. 1004, 2:3–9; Ex. 1006 ¶¶ 17, 26–28; Ex. 1003 ¶¶ 197–198). Petitioner further argues that it would have been obvious to use the H-bridge switch of Rossi as part of the Gregorio actuator drive circuit 16 in the asserted Gregorio-Ramsay combination to periodically switch the polarity of drive signals to electric coil 28 of Gregorio, and thus oscillate magnet 27, under the control of a signal from processor 12 of Gregorio. Pet. 56 (citing Ex. 1003 ¶ 211). Petitioner argues that this combination would have been motivated because Gregorio does not disclose implementation details and therefore one of ordinary skill would have looked toward teachings like Rossi to fill in those details, and that an H-bridge switch was a well-known example circuit for implementing a change in “current flow direction/polarity” for “push” and “pull” actions in a system, and was a simple, cost-effective, and reliable circuit design. Id. at 56–58 (citing Ex. 1020, Abstr., Figs. 4, 6, 1:65–3:54; Ex. 1003 ¶¶ 212–217). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques through routine circuit design considerations and software instructions for generating the control signal. Id. at 58 (citing Ex. 1003 ¶ 218). Petitioner further argues that it would have been obvious to modify the Gregorio-Ramsay-Rossi combination, using the control algorithm disclosed in Aldrich, to replace the monitoring technique of Gregorio with that of Aldrich to maintain a resonance frequency by incrementing or decrementing the drive frequency. Pet. 58–59 (citing Ex. 1004, 4:22–28, 4:42–48; Ex. 1021, 2; Ex. 1003 ¶ 219). Petitioner’s expert provides implementation details of Aldrich, including that the Aldrich hill-climb technique would use a Boolean value to indicate whether the frequency was being increased, with local variables set to default values, and use integer values when processing sensor signals. Id. at 59–60 (citing Ex. 1021, 2; Ex. 1003 ¶¶ 220–222). Petitioner argues that these modifications would have been motivated to improve the Gregorio system using the Aldrich feedback algorithm for targeting a resonant frequency, given that the Gregorio approach had shortcomings that required a monitoring period with reduced haptic feedback, receiving weak EMF signals. Id. at 61–62 (citing Ex. 2004, 3:65–5:55, 5:63–65; Ex. 1021, 1–3; Ex. 1003 ¶¶ 223–227). Petitioner argues that making this combination would have had a reasonable expectation of success given that it involved known techniques for improvement to yield predictable results, readily implemented via software executed by the microprocessor. Id. at 62–63 (citing Ex. 2004, 2:44–50; Ex. 1021, 2; Ex. 1003 ¶ 229). Patent Owner does not address Petitioner’s arguments regarding the” slip op. at 27

  Patent outcomesUS 9,941,830 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,941,830
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

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

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961
• Dermira, Inc. v. Purepharm, Inc.Some claims unpatentable
  PTAB · Dec 27, 2016 · IPR2015-01594 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–8 are unpatentable as anticipated by Hays or obvious over the listed combinations; claim 4 was not shown unpatentable for lack of a reason to add another sweating therapy.

  RulingsFinal written decision

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

    “In interpreting claim terms, the claims themselves provide substantial guidance. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Here, claim 1, from which claims 2–8 depend, recites the dosed amount of glycopyrrolate in solution as “an amount ranging from 3.0 wt. % to 4 wt. %.” Because claim 1 describes the dosed amount by the strength/concentration, it supports our conclusion that term “dosed amount” is not limited by the volume of the glycopyrrolate solution.” slip op. at 6

  • BurdenMixed

    “Petitioner may well be correct that preferring a non-anticholinergic does not necessarily exclude administering “another oral and/or topical therapy for reduction of sweating,” as required by challenged claim 4. Petitioner, however, does not point to any credible evidence or otherwise explain why an ordinary artisan would have chosen another therapy to reduce sweating to be administered in combination with glycopyrrolate. Without some articulated reasoning with rational underpinning as to why an ordinary artisan would have added a second therapeutic for reducing sweating to the transdermal patch of Bodor, which uses the anticholinergic to eliminate the formation of an aqueous layer between the delivery system and the skin to enhance the penetration of the transdermal drug being delivered, Petitioner has not met its burden of demonstrating that claim 4 20 would have been obvious over the combination of Bobrove and Bodor. See KSR, 550 U.S. at 418.” slip op. at 20

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

    “(citing Ex. 1009, 1821). Hays instructs that glycopyrrolate solutions should be carefully applied while avoiding the mouth, nose, and eyes. Id. (citing Ex. 1009, 1798, 1809). For example, it discloses applying a cotton applicator dipped in the glycopyrrolate solution to the skin while holding the hair up out the way to treat patients with gustatory sweating in the hairline. Id. at 31 (citing Ex. 1009, 1819). Dr. Guy testifies that an ordinary artisan would have understood the cotton applicator in Hays “as being any of a cotton ball, a cotton pad, a cotton swab, or having a cotton component as a part of a larger applicator.” Ex. 1003 ¶ 72. According to Hays, glycopyrrolate in concentrations of 0.5%, 1.0%, and up to 4% provided effective control of gustatory sweating with no significant side effects. Pet. 29 (citing Ex. 1009, 1819). Thus, we agree with Petitioner that Hays discloses each and every limitation of claim 1.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed

    “Bobrove specifically teaches applying a “roll on” glycopyrrolate solution. Ex. 1008, 6:26–27, 6:36–37. It, however, also generally teaches that glycopyrrolate is administered topically. Id. at 4:1. Thus, one of ordinary skill in the art would have had a reason to look for other means to apply glycopyrrolate. As Dr. Guy testifies, “[t]here are a limited number of ways to topically deliver a drug to a patient’s skin.” Ex. 1003 ¶ 16. In addition, Bobrove suggests to avoid the eyes, nose, and mouth during the topical administration. Ex. 1008, 5:37–39. Given these considerations, Bodor provides an effective alternative: a cotton cloth to absorb the drug and rub it on the skin. Ex. 1030, 15:39–54; see also Ex. 1003 ¶ 17 (explaining that, at the time of the invention, an ordinary artisan would have known that use of medicated pads “allowed for topical application of a solution, for example to a subject’s face, while excluding application to sensitive areas such as the eyes or mucous membranes”). Thus, we conclude Petitioner has shown, by a preponderance of the evidence, that an ordinary artisan would have had a reason to combine the teachings of Bobrove and Bodor. In sum, Petitioner has shown, by a preponderance of the evidence, that an ordinary artisan would have had a reason to combine the teachings of Bobrove and Bodor, and that the combination teaches each and every limitation of claims 1 and 2. Claims 4, 5, and 8” slip op. at 19

  Patent outcomesUS 8,252,316 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,252,316
• Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentable
  PTAB · Feb 11, 2015 · IPR2013-00507 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable as obvious over Frey and Michelson; claim 18 was not shown unpatentable.

  RulingsFinal written decision

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

    “Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 9

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

    “the capability for posterolateral TLIF procedure.” PO Resp. 30. However, Frey discloses “spinal surgery from a unilateral posterior approach, a lateral approach, an oblique approach, and through laparoscopic or endoscopic instruments from any of a variety of angles or approaches to the spine.” Ex. 1003 ¶ 184. Given that Frey discloses spinal surgery performed “from any of a variety of angles or approaches,” and not just from the posterolateral approach, we are not persuaded by Patent Owner that the “intended purpose” of Frey is to perform spinal surgery from a posterolateral approach, specifically. Rather, Frey discloses that “spinal discs may be displaced or damaged” and “may result in nerve damage, pain, numbness, muscle weakness, and even paralysis.” Ex. 1003 ¶ 3. According to Frey, these issues are addressed by “surgical correction of a collapsed disc space” by “discectomy . . . often followed by restoration of normal disc space height and bony fusion of the adjacent vertebrae to maintain the disc space height.” Id. Hence, the “intended purpose” of the implant of Frey, as explicitly disclosed by Frey, is to correct surgically a collapsed disc space, to restore normal disc space height, and to provide bony fusion of the adjacent vertebrae. We disagree with Patent Owner that incorporating Michelson, which discloses an implant that “engage[s] more of the adjacent vertebrae,” (Ex. 1105, 3:49–50) would have rendered the resulting implant inoperable for Frey’s intended purpose of surgically correcting a collapsed disc space or providing bony fusion of the adjacent vertebrae. Even if the “intended purpose” of Frey is to practice a “TLIF procedure,” as Patent Owner contends, we are not persuaded by Patent Owner’s argument that an implant measuring greater than 40 mm in length would be inoperable in a “TLIF procedure.” As Petitioner explains, U.S. Patent No. 7,815,682 (the ’682 patent) demonstrates that when performing “Transforaminal lumbar interbody fusion (TLIF) procedures,” one of ordinary skill in the art may employ a spinal implant with “a length ranging between 20 and 45 mm.” Pet. Resp. 6 (citing, Ex. 1028, 1:37–38; 4:45). The ’682 patent does not disclose that the use of a spinal implant measuring up to 45 mm in length would render the “TLIF procedure” inoperable.” slip op. at 6

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 44) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 11

  • ExcludeOther

    “C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 12

  Patent outcomesUS 8,187,334 mixed
  § 103 obviousness
  Patents in suitUS 8,187,334
• Medtronic, Inc. v. Nuvasive, Inc.Some claims unpatentable
  PTAB · Feb 11, 2015 · IPR2013-00508 · APJ Stephen C Siu · IPR · Final written decision

  Claims 1–5, 10, 11, 14–17, and 19–28 are unpatentable under §103; claim 18 was not shown unpatentable because the cited art did not establish its required dimensions.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Thus, it would have been obvious to one of ordinary skill in the art to have provided an implant with a length of greater than 40 mm (e.g., 42 mm) and at least 2.5 times the width, as recited in claim 1.” slip op. at 7

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Even assuming that NuVasive’s CoRoent XL implant experienced “commercial success,” as Patent Owner asserts, Patent Owner has not demonstrated sufficiently that there is a nexus between the merits of the claimed invention and the evidence offered. For example, Patent Owner argues that NuVasive “pioneered the market for lateral, trans-psoas interbody fusion surgeries,” (PO Resp. 59) but fails to demonstrate sufficiently that any of the disputed claims recite “lateral, trans-psoas interbody fusion surgeries.” We are not persuaded by Patent Owner’s arguments.” slip op. at 17

  • ExcludeOther

    “C. Motion to Exclude In its Motion to Exclude, Patent Owner seeks to exclude the Declaration of Loic Josse (Ex. 1116, “Josse Declaration”). We did not rely on the Josse Declaration in this decision. Therefore, Patent Owner’s motion to exclude is dismissed as moot.” slip op. at 17

  Patent outcomesUS 8,187,334 mixed
  § 103 obviousness
  Patents in suitUS 8,187,334
• Ariosa Diagnostics v. Isis Innovation LimitedSome claims unpatentable
  PTAB · Sep 2, 2014 · IPR2012-00022 · APJ Lora M Green · IPR · Final written decision

  Claims 1, 2, 4, 5, 8, 19, 20, 24, and 25 are unpatentable as anticipated by Kazakov; claims 3, 12, 13, 15, 18, 21, and 22 were not shown unpatentable.

  RulingsFinal written decision

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

    “party in interest filed a civil action challenging the validity of a claim of the patent” in § 315(a)(1) of the statute. Paper 20, 4. Under Isis’s interpretation of the statute, “filing” extends beyond the commencement of the civil action and includes raising the affirmative defense of invalidity. Id. We looked to the Federal Rules of Civil Procedure as a guide to interpreting the plain meaning of the statute. Id. We noted that Rule 2 of the Federal Rules of Civil Procedure9 states that “[t]here is one form of action—the civil action,” and Rule 3 states that “[a] civil action is commenced by filing a complaint with the court.” Id. at 5. Defenses are raised in answer to the complaint or in answer to a counterclaim. Id. (citing Fed. R. Civ. P. 12). We concluded, therefore, that when the statute refers to filing a civil action, it refers to filing a complaint with the court to commence the civil action. Id.; see, e.g., Baldwin Cnty. Welcome Ctr. v. Brown, 466 U.S. 147, 149 (1984) (citing Fed. R. Civ. P. 3” slip op. at 11

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “Specifically, the panel in that case looked to the Federal Rules of Civil Procedure in making its determination. Id. at 15. As to the requirement of service, the panel noted that the infringement suit was voluntarily dismissed without prejudice under Fed. R. Civ. P. 41(a). Id. The panel noted further that the Court of Appeals for the Federal Circuit has consistently interpreted the effect of such dismissals as leaving the parties as though the action had never been brought. Id. (citing Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002) (“The dismissal of an action without prejudice leaves the parties as though the action had never been brought”); Bonneville Associates, Ltd. Partnership v. Baram, 165 F.3d 1360, 1364 (Fed. Cir. 1999) (“The rule in the federal courts is that ‘[t]he effect of a voluntary dismissal without prejudice pursuant to Rule 41(a) is to render the proceedings a nullity and leave the parties as if the action had never been brought.’”) (citations and internal quotes omitted.)); Accord, Wright, Miller, Kane, and Marcus, 9 Federal Prac. & Proc. Civ. § 2367 (3d. ed.) (“[A]s numerous federal courts have made clear, a voluntary dismissal without prejudice under Rule 41(a) leaves the situation as if the action never had been filed.”) (footnote omitted). As in the Macauto case, we agreed that the dismissal without prejudice leaves the parties as if the action had never been brought, and concluded that Ariosa was not barred from filing its Petition in IPR2013- 00250 under 35 U.S.C. § 315(b). IPR2013-00250, Paper 26, 3. As a result, we did not address Isis’s arguments (IPR2013-00250, Prelim. Res. 44–46) regarding joinder in the context of the bar under § 315(b). Id.” slip op. at 17

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedDecided for petitioner

    “While the plain language of the statute mentions joinder of “a party” and does not specifically articulate the joinder of issues, it states that “any person who properly files a petition under section 311” may be joined at the Director’s discretion. Thus, there does not appear to be any language in the statute directly prohibiting the joinder of issues by the same party. The legislative history of this section provides little guidance as to the scope of this statutory section. As the final Committee Report noted, under §§ 315(c) and 325(c), “[t]he Director may allow other petitioners to join an inter partes or post-grant review.” See H.R. Rep. No. 112-98, pt.1, at 76 (2011). During the Senate’s March 2011 debates on the AIA, Senator Kyl stated that the USPTO expected to allow liberal joinder of reviews: The Office anticipates that joinder will be allowed as of right— if an inter partes review is instituted on the basis of a petition, for example, a party that files an identical petition will be joined to that proceeding, and thus allowed to file its own briefs and make its own arguments. If a party seeking joinder also presents additional challenges to validity that satisfy the threshold for instituting a proceeding, the Office will either join that party and its new arguments to the existing proceeding, or institute a second proceeding for the patent. 157 Cong. Rec. S 1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl). Senator Kyl, thus, contemplated the joinder of issues as well as the joinder of parties. In addition to noting that §§ 315(c) and 325(c) give the USPTO” slip op. at 19

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

    “the amplification step in the Institution Decision. Both the amplification step and the detecting step of claim 1, however, use very similar language. That is, the amplifying step requires “amplifying a paternally inherited nucleic acid from the serum or plasma sample,” and the detecting step requires “detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.” Applicants could have added “only,” such that the claim read as “only detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample,” but they chose not to do so. See, e.g., Aria, 726 F.3d at 1301 (noting as to the claim limitation of “paternally inherited nucleic acid” that during prosecution before the examiner the inventors could have limited the claims to those nucleic acids that were known in advance to come from the father). Thus, when the “detecting” step is construed in conjunction with the use of “comprising” as the transitional phrase, there is nothing in the language of claim 1 that limits the detecting step to also determining or identifying the detected nucleic acid as being of fetal origin and not being possessed by the pregnant female.” slip op. at 25

  Patent outcomesUS 6,258,540 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,258,540
• Nuvasive, Inc. v. Warsaw Orthopedic, Inc.Some claims unpatentable
  PTAB · Jul 10, 2014 · IPR2013-00206 · APJ Stephen C Siu · IPR · Final written decision

  Claims 17–23 were held unpatentable as obvious over Jacobson, Leu, and Brantigan; claims 9–16 and 24–30 were not shown unpatentable on the asserted obviousness grounds.

  RulingsFinal written decision

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

    “ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23

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

    “Jacobson, Leu, Brantigan - combinability Patent Owner argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Jacobson, Leu, and Brantigan. PO Resp. 50–53. Jacobson discloses advancing instruments laterally into the disc space to perform a “fusion” procedure. Ex. 1004, 5:1– 4, 6:11–13. Leu discloses fusion of the lumbar spine by introducing an “interbody graft” into the disc space. Ex. 1005, p. 603. Brantigan, like Leu, discloses “prosthetic implant devices” that are “suitable for . . . lateral placement in any area of the spine.” Ex. 1006, 2:56–58. We agree with Petitioner that the combination of the known element of performing a spinal fusion procedure by laterally advancing instruments into the disc space (Jacobson) with the known element of using an “interbody graft” in a spinal fusion procedure (Leu and Brantigan) would have resulted in no more than the predictable and expected result of performing a spinal fusion procedure (Jacobson) that includes inserting an implant into a disc space (Leu or Brantigan). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).” slip op. at 23

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

    “of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because, according to Patent Owner, Brantigan “teaches away from sizing an implant to rest on the apophyseal ring or be sized to occupy substantially the full transverse width of adjacent vertebral bodies.” PO Resp. 51–52, 55–56. This issue was discussed previously above. Patent Owner also argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Brantigan with any of Jacobson or Leu because the “cannulae disclosed by Jacobson and Leu are too narrow to accommodate Brantigan’s implant,” that “a person of ordinary skill in the art would not be able to insert [Brantigan’s] implant in Jacobson’s [system],” and that “the shape of the Brantigan implant is not conducive to insertion through a cannula or similar surgical instrument [as disclosed by Jacobson or Leu].” PO Resp. 52–53. In other words, Patent Owner argues that the combination of Jacobson, Brantigan, and Leu would not have been obvious to one of ordinary skill in the art because the prior art systems are not physically combinable (i.e., Brantigan’s implant allegedly cannot be physically combined with the cannula of either Jacobson or Leu). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”). We are thus not persuaded by Patent Owner’s argument.” slip op. at 24

  • Obviousness (§103) › Objective indicia / secondary considerations › Commercial successObjective indicia no nexusDecided for patent owner

    “Secondary considerations We recognize that evidence of secondary considerations must always be considered en route to the determination of obviousness, but its existence alone does not control the conclusion of obviousness. Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to evidence of secondary considerations is dependent upon whether there is a nexus between the merits of the claimed invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).” slip op. at 25

  Patent outcomesUS 8,251,997 mixed
  § 103 obviousnesscites KSR
  Patents in suitUS 8,251,997

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.