- Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Aug 20, 2026 · IPR2025-00343 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–6 and 8–13 were not shown unpatentable because Petitioner did not establish a reason to combine Bucknell’s multiplexing techniques with Eckert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See generally PO Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’138 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“1. a subset of radio bearers Petitioner points out that in IPR2022-01127 the Board “preliminarily determined that a subset of the plurality of radio bearers” means “less than all of the plurality of radio bearers.” Pet 12 (citing Ex. 1019, 18–19). Petitioner explains that, in the present proceeding, it has applied “the prior art in accordance with that construction; however, in view of the asserted grounds, no claim term requires express construction to find the Challenged Claims unpatentable.” Id. (citing Nidec 868 F.3d 1017). Patent Owner neither disputes the prior construction of “a subset of radio bearers,” nor offers additional constructions. See generally PO Resp. To the extent necessary, and in accordance with our prior determination, we construe “a subset of the plurality of radio bearers” to mean “less than all of the plurality of radio bearers.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“bears pointing out that the specification of the ’138 patent appears to explain what “a single allocation” means: If there are multiple QoS requirements within a single 3GPP PDP context, a single physical allocation of radio resources may be made to the UE. In this manner, a single PDP context implies a single CCTrCh. This single physical allocation of radio resources provided to a UE is shared amongst a number of services, in proportion to their respective QoS requirements, for example in proportion to the signalled weight values (Stier). Ex. 1001, 9:36–43 (emphasis added). Petitioner’s expert, Dr. Ding, explains that the “abbreviation CCTrCh was understood in the art to refer to a transport channel known as the Coded Composite Transport Channel.” Ex. 1003 ¶ 88. Dr. Ding testifies that Eckert teaches selecting data for uplink within a determined TTI and scheduling the uplink transmission on a transport channel, E-DCH, where scheduling of the E-DCH in a UE is controlled by a base station. Eckert, [0012] (“[A] new dedicated transport channel called Enhanced Dedicated Channel (E-DCH) has been introduced for this purpose. The fundamental characteristics of this new transport channel include . . . scheduling controlled by the base station, also called NodeB in UMTS…” Id. ¶ 90. In addition to Eckert disclosing a single transport channel E-DCH, Petitioner argues that Eckert discloses using a “finite quantum of physical resources” where “[t]he ’138 patent disclosure parallels Eckert, with both the E-DCH and CCTrCH transport channels relating to a UMTS uplink, employing spreading codes in code division multiple access (CDMA), and Reply 6 (citing Ex. 1005, ¶¶ 3, 8, 15, 23; Ex. 1071 ¶¶ 17–20; Ex. 1011 ¶¶ 6, 51). We do not need to specifically interpret this claim phrase because there is no actual dispute as to the meaning of the claim language itself and because, ultimately, the construction of this phrase plays no part in our Decision.” slip op. at 15
- BurdenNot shown unpatentable
“D. Ground 1: Claims 1–4 and 8–11 – Alleged Obviousness over Eckert in view of Bucknell and Lohr-1 On the complete record now before us, Petitioner has not established a preponderance of evidence that claims 1–4 and 8–11 would have been obvious over Eckert, Bucknell, and Lohr-1. For the reasons explained below we determine that Petitioner has failed to show why a person of ordinary skill in the art would have modified Eckert in view of Bucknell in the manner claimed. We focus our analysis below on claim 1, and more specifically on those limitations for which the combination of Eckert and Bucknell is asserted. 1. Limitations [1.0]–[1.2] and the combination of Eckert and Bucknell The combination of Eckert and Bucknell is essential to each of Petitioner’s asserted grounds in this proceeding. Pet. 13. At the outset, we address this issue because our determination that Petitioner has failed to show why a person of ordinary skill in the art would have combined Eckert and Bucknell is dispositive as to all grounds.” slip op. at 20
Patent outcomesUS 10,292,138 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,292,138 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentablePTAB · Dec 10, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Kwatra does not teach or suggest minimizing rotational velocity and acceleration as required by the claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “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.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing 6 Patent Owner asserts objective evidence of nonobviousness. Prelim. Resp. 19–27. or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 14–15. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction to resolve any current dispute between the parties.” PO Resp. 15. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Kwatra teaches, at Equation 7, minimizing velocity and acceleration of a function representing camera path (P). FF ¶¶ 6, 8–9. Kwatra does not state that this camera path function considers rotation. Rather, the words “camera path” suggest x, y, z movement of the camera rather than rotation of the camera. Dr. Foroosh’s testimony that Kwatra’s minimization of a smoothed camera path does not result in minimizing rotational velocity and acceleration is credible because this testimony is consistent with Kwatra as a whole and consistent with the other evidence of record. Id. ¶ 10. Kwatra recognizes that image rotation angle (“θ”) may not remain smooth. Id. ¶ 12. But rather than attempting to minimize velocity and acceleration of rotation of the camera housing, Kwatra states that applying a smoothness constraint on rotation angle “may be non-linear.” Id. ¶ 13. Consistent with Kwatra, Dr. Foroosh credibly explains the difficulty of applying linear techniques to rotation. Id. Thus, Kwatra proposes instead constraining the sine and cosine of theta. Id. ¶ 14. The Kwatra provisional application is part of the Kwatra reference (id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“(id. ¶ 15), and it similarly opts for simpler schemes rather than estimating all parameters for all frames jointly. Id. ¶ 16. The provisional explains that the rotational component is relatively small such that non-linear computations minimizing velocity and rotation can be avoided. Id. ¶¶ 17–18. The testimony of Patent Owner’s witness, Dr. Foroosh, explaining the provisional is credible (Ex. 2018 ¶ 72) because it is consistent with Kwatra’s complete disclosure. Dr. Foroosh’s testimony is more credible than the testimony of Petitioner’s witness, Dr. Katsaggelos, because Dr. Katsaggelos did not review the Kwatra provisional application and, thus, did not review the entire disclosure of Kwatra. Id. ¶ 19; see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (obviousness analysis considers whether “the claimed inventions are rendered obvious by the teachings of the prior art as a whole” (emphasis added)).” slip op. at 28
Patent outcomesUS 10,574,894 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,574,894 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentablePTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.
RulingsFinal written decision- BurdenFwd all claims patentableNot shown unpatentable
“4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (POSITA) in the field of the ’840 patent 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. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10
Patent outcomesUS 10,958,840 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentablePTAB · Nov 25, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Shi does not disclose the claimed low-light high-pass parameter required by the asserted obviousness grounds.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Given the teachings of the specification, we agree with Patent Owner that a low-light high-pass parameter is a parameter of a smoothing function that favors high frequencies (high pass) when exposure times are long (low light). See Tr. 42:10–18 (Patent Owner’s counsel stating that “high-pass” means “there’s a bias or preference for high frequencies”); Ex. 2020, 93:23– 94:15 (Petitioner’s declarant, Dr. Katsaggelos, agreeing that a high-pass system attenuates the low frequency of a signal). Although we acknowledge Petitioner’s position that the specification provides other ways or considerations in implementing a smoothing function, based on our above analysis of the specification, we find that the specification describes the lowlight high-pass parameter as a specific component of a smoothing function. See, e.g., Ex. 1001, 21:17–25 (setting out several parameters besides the low-light high-pass parameter used in trajectory smoothing).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“position and a real device position. Id. at 18:27–40. In other words, the blur is addressed by analyzing the image to identify motion and then shifting the image. Shi, however, does not disclose how its parameter is based on low light (or the long exposure times indicative of low light). In its Petition, Petitioner asserts that a person of ordinary skill in the art would understand that “blurs can be caused by low light conditions.” Pet. 28 (citing Ex. 1003 ¶ 111). Although this is true, that does not mean that Shi’s blurs are identified by a parameter that considers low light. As we just described, Shi identifies the blur by quantifying the amount of motion of the points in an image, not by identifying low light. This is simply a different way to determine the presence of motion blur. In Shi, blur is measured, whereas in the ’840 patent, it is inferred based on low-light conditions (e.g., by observing the exposure time). See, e.g., Ex. 1007, 18:7– 26; Ex. 1001, 19:12–26. In its Reply, Petitioner does not point to any further disclosures. Accordingly, we find that Shi does not disclose the “low-light” aspect of the claimed low-light high-pass parameter. This is sufficient to determine that Petitioner’s ground does not meet all claim limitations. Similarly, we find that Shi does not disclose the “high-pass” aspect of the parameter. Shi’s blur compensation uses a spherical interpolation to modify the image. Ex. 1007, 18:27–40. The low-light high-pass parameter, as we have construed the term, allows more high frequencies. To allow more high frequencies, this necessarily means either allowing fewer low frequencies, or allowing more high frequences as opposed to some counterfactual situation in which fewer high frequencies were going to be allowed. See Ex. 2020, 94:23–95:15; Ex. 2022. We are directed to no persuasive evidence from Petitioner that Shi’s spherical interpolation favors high frequencies over low frequencies. Accord Ex. 2018 ¶ 107 (Patent Owner’s expert stating that Shi’s spherical interpolation “reintroduce[es] both high- and low-frequency motion”). Even if Shi allows the viewing window to track the camera position “consistent with the natural blur in the image” (Ex. 1007, 17:63–67), we are not provided with sufficient evidence to conclude by a preponderance of the evidence that providing a similar visual goal as a high-pass parameter (Ex. 1001, 22:16–18, “the output motion may include high frequencies that mask motion blur”) is the same as having a high-pass parameter. Again, merely preserving high frequencies is not the same as having a “high-pass parameter” because, as construed, a “high-pass parameter” also involves some degree of attenuation of low frequencies or relative increase of high frequencies. Accordingly, we find that Shi does not disclose the “high-pass” aspect of the claimed low-light high-pass parameter.” slip op. at 18
Patent outcomesUS 10,958,840 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentablePTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38
Patent outcomesUS 8,291,243 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00963 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 were not shown unpatentable because the asserted combinations did not disclose the construed starting time-frequency coordinate, which excludes separate time and frequency coordinates.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“After reviewing the parties’ respective positions and the intrinsic evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that these Reply arguments modifying Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00793 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–18 were not shown unpatentable under § 103 because the asserted combinations did not disclose the claimed starting time-frequency coordinate.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art as it does not materially differ from Patent Owner’s proposed definition and is consistent with the level of skill reflected in the ’450 Patent Specification and the asserted prior art. In any event, our conclusions would be the same under Patent Owner’s definition.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundPlain and ordinary meaningDecided for patent owner
“evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - American Honda Motor Co. Inc. / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Nov 1, 2024 · IPR2022-01567 · APJ Kristen L Droesch · IPR · Final written decision
The Board held claims 1–18 not unpatentable because the asserted combinations did not teach the claimed starting time-frequency coordinate, which excludes separate time and frequency coordinates.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the record, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art as it does not materially differ from Patent Owner’s proposed definition and is consistent with the level of skill reflected in the ’450 Patent Specification and the asserted prior art. In any event, our conclusions would be the same under Patent Owner’s definition.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalPlain and ordinary meaningDecided for patent owner
“After reviewing the parties’ respective positions and the intrinsic evidence cited by the parties, we agree with Patent Owner that the Board’s decision denying institution in IPR2021-01486, finding that “a starting timefrequency coordinate” is not disclosed by separate starting time and frequency coordinates, constitutes a disclaimer which is binding on these proceedings. See Ex. 1014, 27; Aylus, 856 F.3d at 1361; Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 1383 (Fed. Cir. 2022); see also Ex. 1012, 12–13 (Patent Owner’s arguments that a time coordinate and a frequency coordinate is not the same as “a starting time-frequency coordinate.”). As such, we find that the ordinary and customary meaning of “a starting time frequency coordinate” excludes separate time and frequency coordinates. We further agree with Patent Owner that the ’450 Patent Specification is consistent with this construction because it discloses segments of time-frequency resource (e.g., V1, V2, . . . Vm) each having a starting time-frequency coordinate (e.g., index VZ1=0, Vz2=1, VZ3=9 . . . Vm). See Ex. 1001, 6:3–14, 7:7–27, Fig. 6; PO Resp. 16–17. Finally, we agree that the recitations of dependent claims 2 and 3 are not inconsistent with “a starting time frequency coordinate” that does not encompass separate time and frequency coordinates. See PO Resp. 19–21.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that these Reply arguments modifying Vijayan089 in view of Park are untimely. Contrary to Petitioner’s suggestion, Patent Owner does not explicitly propose construing “a starting time-frequency coordinate,” as limited to a “single index.” See PO Resp. 11–21; PO Sur-reply 1–5. A reply may only respond to arguments raised in a response or to address issues discussed in the institution decision. (2018); 37 C.F.R. § 42.23(b)). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in” the petition. Id. at 74. A petitioner may not submit new arguments or evidence in a reply that it could have presented earlier, for example, to make out a prima facie case of unpatentability. See id. at 73. “[A] reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id.; see also Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1381 (Fed. Cir. 2023) (“We have held that a petitioner may not in reply rely on new prior art to teach a claim limitation.”). Accordingly, we decline to consider Petitioner’s belated Reply arguments that it would have been obvious to modify Vijayan089 to use an index.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“coordinates. See Pet. 44–47. Although Vijayan089 discloses that the assigned segment may be specified by two parameters––the start of the segment and the length of the segment, Vijayan089 further discloses the start of the segment parameter may be given by the starting subband and symbol period. See Ex. 1005 ¶ 74. Petitioner does not direct us to any disclosure in Vijayan089 describing this start of the segment parameter in any additional detail or describing this parameter in terms other than a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Pet. 44–47. Indeed, Petitioner asserts that PLC2 or “Segment 734 includes a starting time-frequency coordinate of: Symbol Period =4, Subband Group =2.” Pet. 47; see Pet. 46 (Petitioner’s annotated Figure 7B of Vijayan089); Ex. 1003 ¶¶ 87, 150. We further agree that Dr. Wilson’s deposition testimony is consistent with Vijayan089’s description of the start of the segment in terms a starting symbol period (i.e., time coordinate) and subband (i.e., frequency coordinate). See Ex. 2007, 149:6–12, 150:10–22, 152:22–153:5. As explained above in Section II.B., we find that separate time and frequency coordinates have been disclaimed from the ordinary and customary meaning of “a starting time-frequency coordinate.” Accordingly, Vijayan089’s disclosure of the start of the segment parameter given by the symbol period (i.e., time coordinate) and starting subband (i.e., frequency coordinate) does not disclose the claimed “a starting time-frequency coordinate” in accordance with its correct construction.” slip op. at 34
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentablePTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision
Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29
Patent outcomesUS 7,653,414 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.No claims unpatentablePTAB · Jul 5, 2023 · IPR2022-00327 · APJ Matthew S Meyers · IPR · Final written decision
Claims 15–17 and 22 were not shown unpatentable because the Pirovolou-based combinations did not establish the comparison required by limitation 15.3.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or petroleum engineering, or a closely related scientific field, and three-five years of work experience related to the design, performance, and control of components and systems used in oil and gas exploration and production, including downhole tools used in drilling applications. A lack of experience can be remedied with additional education, and vice versa. Pet. 7 (citing Ex. 1007 ¶¶ 37–41). Patent Owner does not provide its own assessment regarding the level of skill in the art or otherwise dispute Petitioner’s assertion in its Patent Owner Response. See generally PO Resp.; cf. Prelim. Resp. 29 (Patent Owner indicates that it “has adopted Petitioner’s articulation of the level of skill in the art.”). However, Patent Owner’s declarant, Dr. Hilbert, notes that he is familiar with Petitioner’s definition of the person of ordinary skill in the art, and opines that “the Petition’s articulation of the level of skill accurately reflects that of [one of ordinary skill in the art] with respect to the ’283 [p]atent.” Ex. 2010 ¶ 44 (citing Pet. 7). Based on this record, we apply Petitioner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“After reviewing the full record, we determine that it is unnecessary to construe the term “estimated position of the drill bit in the formation,” to reach a determination in this proceeding. 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)). However, we address the parties’ dispute regarding the meaning of limitation [15.3], i.e., “comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole,” within our merits analysis below. See Pet. Reply 14–15; PO Sur-reply 16.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“construes limitation [15.3] to require that “the comparison [be] performed on two positions ‘along a planned path of the borehole.’” Pet. Reply 14 (emphasis omitted). Petitioner’s proposed construction is inconsistent with the ’283 patent’s Specification and the language of limitation [15.3]. Figure 7C of the ’283 patent, reproduced below, is an illustration of “one embodiment of a convergence plan diagram with multiple convergence paths.” Ex. 1001, 1:56–57. Figure 7C illustrates “the estimated bit position is indicated by arrow 743 relative to the desired bit position 741 along the planned path 742.” Id. at 18:12–14.6 Contrary to Petitioner’s argument that limitation [15.3] “clearly recites that the comparison is performed on two positions ‘along a planned path of the borehole’” (Pet. Reply 14 (emphasis omitted)), we understand limitation [15.3] to recite that only one position, i.e., “a desired position,” is “along a planned path of the borehole.” See Ex. 1001, 36:12–14 (“comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole”).” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 2010 ¶ 95. We find to be credible Dr. Hilbert’s testimony that, if two points are both along a planned path, a comparison would not indicate whether the drill is outside a margin of error. We also credit Dr. Hilbert’s declaration testimony that the purpose of limitations 15.3 and 15.4 is to compare the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole and calculate more than one solution defining a path from the estimated position of the drill bit to the planned path if the drill bit is off course (i.e., outside a defined margin of error relative to the desired position). Id. ¶ 96. During his deposition, when asked whether “the step of comparing the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole is used to determine whether the bit is off course,” Dr. Schubert agreed. Ex. 2013, 73:17–22. Dr. Schubert also agreed that in order “to determine that [the bit]’s off path, you have to look at the planned path, not the projected trajectory.” Id. at 87:16–19. Based on the full record, we agree with Patent Owner that “both parties’ experts agree that the alleged comparison in Pirovolou—a comparison of two points on the same projected trajectory (i.e., a trajectory that has not yet been drilled)— will not be indicative of whether a correction is presently necessary.” PO Sur-reply 18 (citing Ex. 2010 ¶¶ 96–97; Ex. 2013, 73:17–22, 87:16–19). Therefore, Petitioner fails to establish that Pirovolou discloses or renders obvious the comparison recited by limitation [15.3] when read in context with limitation [15.4].” slip op. at 31
Patent outcomesUS 8,210,283 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,210,283
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.