- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · 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 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentablePTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision
Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7
Patent outcomesUS 10,524,002 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,524,002 - Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentablePTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].
RulingsFinal written decision- Skill levelOther
“would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable
“To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16
Patent outcomesUS 11,140,441 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,140,441 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01187 · APJ Garth D Baer · IPR · Final written decision
Claims 1, 2, 8–11, and 16 are unpatentable as obvious over Ingle and Hasei; claims 3, 5, and 6 were not shown unpatentable because the Hanamura-based grounds lack the claimed trench.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“isolation, rather than in the claims’ context, and in light of the ’492 patent’s specification. In the trench/layers context of the ’492 patent, the word in requires more than it does in the circle/square context.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. Patent Owner does not dispute Petitioner’s proposed definition. We adopt Petitioner’s uncontested proposed definition because it is consistent with the disclosures of the asserted prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“rather than the combination of Ingle’s capacitor and Hasei’s droplet discharge application that Petitioner asserts. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Even if Ingle falls short of teaching structured application for its capacitor’s cathode, as Patent Owner argues, that does not undermine Petitioner’s challenge because Petitioner proposes using Hasei’s structured application (i.e., a droplet discharge device) to form the cathode of Ingle’s capacitor. See Pet. 24–25. Patent Owner’s additional argument that “Hasei contains no discussion of forming capacitors” (PO Resp. 36; see PO Sur-reply 17–18) is similarly flawed—it attacks Hasei individually, while ignoring Ingle’s capacitor teaching. We agree with Petitioner—the combination of Ingle and Hasei teaches structured application of the capacitor’s cathode. In addition, we disagree with Patent Owner that “Petitioner provides no reason why a POSITA would have extended Hasei’s method for producing its OLED to a capacitor.” PO Resp. 36; see PO Sur-reply 17 (asserting “pure conjecture”). To the contrary, as noted above, Petitioner explains, with relevant support from Hasei, that its structured application method reduced electrode-material waste and shortened manufacturing times as compared to photolithography. Pet. 25 (citing Ex. 1007 ¶¶ 5, 7). Given those benefits, Petitioner has articulated sufficient reasoning with rational underpinning to support that its proffered combination would have been obvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 13
Patent outcomesUS 9,257,492 mixedClaim construction§ 103 obviousnesscites KSRPatents in suitUS 9,257,492 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · Dec 2, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 7–12, and 17–20 are unpatentable as obvious; claims 3–6 and 13–16 were not shown unpatentable because the asserted Watanabe combinations were unsupported.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). 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 and applies Petitioner’s proposed level of skill. PO Resp. 6. We find that Petitioner’s proposal is reasonable and consistent with the ’832 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). Thus, we apply Petitioner’s proposal in our analysis.” slip op. at 13
- Prior constructionPrior construction adoptedDecided for petitioner
“In our Institution Decision, we construed “determin[ing] a viewing window for the visual content as a function of progress through the progress length” as “requiring determining a viewing window for different times of the video.” Inst. Dec. 21. Neither party disputes this construction. PO Resp. 7; Pet. Reply 1–7. We maintain this same construction.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Thomason are in the same field of endeavor. Thomason describes a camera and method for correctly orientating pictures from the camera. See, e.g., Ex. 1004 ¶¶ 1, 2 29–40, Figs. 3a–3b. In particular, Thomason is interested in rotating and cropping images to reduce the effect of poor orientation. Pet. 9 (citing Ex. 1004 ¶¶ 2, 34, 36). Pacurariu likewise describes aligning and resizing/cropping of a captured image to correct poor orientation. See, e.g., Ex. 1005 ¶¶ 1, 3, 45–56, Figs. 5A–5C. The preponderance of the evidence also supports that a person having ordinary skill in the art would have had reason to combine the Pacurariu’s teachings with Thomason to predictably improve Thomason. Thomason teaches correct rotation of video data and makes use of rotation sensor to correct rotated images. Pet. 19–21 (citing, e.g., Ex. 1004 ¶¶ 4, 27, 29, 35; Ex. 1002 ¶¶ 76–77). Pacurariu similarly uses sensors and measures tilt angle of the camera. Id at 21–22 (citing, e.g., Ex. 1005 ¶¶ 51–52, Fig. 6; Ex. 1002 ¶ 78). Pacurariu further teaches that its tilt data angle can be stored for each “video frame.” Id. at 22 (citing Ex. 1005 ¶ 52). Petitioner, with support from credible testimony of Dr. Katsaggelos, explains how the teachings of Thomason and Pacurariu could be successfully combined. Id. at 23 (citing, for example, Ex. 1002 ¶ 81). A person of ordinary skill in the art could have known that Thomason’s system could be improved by saving rotation data for each video frame and correcting images on a frame-by-frame basis. Id. at 23–24. The testimony of Dr. Katsaggelos is credible in this regard. Ex. 1002 ¶¶ 80–81. Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents”). Based on the evidence presented, Petitioner establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8–9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6, 7.” slip op. at 27
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“evaluating nexus between the claimed invention and objective evidence of nonobviousness, also referred to as secondary considerations. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We first consider whether Patent Owner has demonstrated “that its products are coextensive (or nearly coextensive) with the challenged claims,” resulting in a rebuttable presumption of nexus. Id. at 33. If not, that “does not end the inquiry into secondary considerations”; “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. (quoting Fox Factory, 944 F.3d at 1373–75).” slip op. at 62
Patent outcomesUS 11,336,832 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,336,832 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Some claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,015,413 - Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentablePTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision
Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79
- BurdenNot shown unpatentable
“Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65
Patent outcomesUS 9,171,268 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,171,268 - Apple Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · 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 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,941,830 - Google LLC v. Security First Innovations, LLCSome claims unpatentablePTAB · May 16, 2025 · IPR2024-00212 · APJ Thomas L Giannetti · IPR · Final written decision
Claims 1, 2, 5, 9, and 11–14 were held unpatentable as obvious over Tajima and Foster or Foster and Hayhurst; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use.” Pet. 4 (citing Bhattacharjee Decl. ¶¶ 41– 45). Petitioner further asserts that a “higher level of education may substitute for less experience.” Id. At the institution stage, Patent Owner did not oppose Petitioner’s assertions or provide a definition of a person of ordinary skill in the art. See generally Prelim. Resp.; Rubin I Decl. ¶ 20 (accepting Dr. Bhattacharjee’s proposed qualifications for the purposes of his declaration). We regarded Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our Institution Decision, we adopted Petitioner’s proposal. Institution Dec. 11. Post-institution, neither party has contested this description. See Rubin II Decl. ¶ 20 (accepting Dr. Bhattacharjee’s definition). For the reasons given, we maintain our previous description of the person of ordinary skill.” slip op. at 13
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Ex. 1005 ¶ 0111. Dr. Rubin testifies, succinctly, that “I do not believe that a [person of ordinary skill] would understand that Tajima uses the term ‘information regarding the key’ to refer to the key. If Tajima meant to say the ‘key,’ there would be no need to use the phrase ‘information regarding the key.’” Rubin II Decl. ¶ 41. He further testifies that “[w]hen Tajima wishes to refer to a ‘key,’ it does so directly” (citing many instances where Tajima makes explicit reference to keys). Id. ¶ 42 (citing Ex. 1005 ¶¶ 67, 70, 71, 75, 77, 86, 88, 89). We find Dr. Rubin’s reasoning on this issue persuasive. On the other hand, we find Dr. Bhattacharjee’s response less convincing. Bhattacharjee II Decl. ¶¶ 5–23. We find that he does not 5 Petitioner states that it does not rely on the doctrine of inherency to establish that this limitation is met by Tajima. Pet. Reply 2. understand that Tajima uses the terms “information regarding the key” and “key information” to refer to an encryption key. Id. ¶ 5 (citing Bhattacharjee I Decl. ¶ 103, 131). Lacking support for disclosure of an encryption key in Tajima itself, Dr. Bhattacharjee turns to other references, including Foster. Id. ¶¶ 7–9. Dr. Bhattacharjee testifies that “Foster’s use of the term ‘key information’ to describe information that includes the key and additional information . . . explains why Tajima did not just say ‘key’ when referring to the information attached to the data fragments.” Id. ¶ 8. Dr. Bhattacharjee’s testimony is unconvincing. In Foster, there is explicit disclosure of including the encrypted title key itself in the header extension. Ex. 1006 ¶ 66 (“As depicted, header extension 118 includes encrypted title key 112 . . . “). In contrast, Dr. Bhattacharjee cites no similar disclosure in Tajima. In fact, Dr. Bhattacharjee’s reliance on other references to support anticipation runs contrary to the rule that “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (emphasis added). We do not find Dr. Bhattacharjee’s testimony based on Foster and other references convincing of anticipation by Tajima. Nor do we find Petitioner’s alternative obviousness challenge based on Tajima persuasive. Pet. 22. The Petition includes a single-sentence explanation of this obviousness contention: “Even if Tajima had not disclosed that its key information includes the corresponding key, that would have been an obvious and conventional way to implement what Tajima discloses—i.e., a system that needs only the key information to decrypt data fragments and not additional key management infrastructure.” Id. (citing paragraph 104 of his initial declaration mirrors the Petition and provides no record citations to support his opinion of obviousness. Such unsupported expert testimony is entitled to little weight. “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a); PTAB Consolidated Trial Practice Guide 40 (Nov. 2019) (“Trial Practice Guide”) (“Opinions expressed without disclosing the underlying facts or data may be given little or no weight.”).6” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Patent Owner responds that Petitioner “fails to demonstrate” a motivation to combine the references. PO Resp. 9. Patent Owner argues that “Tajima and Foster are directed to entirely different fields and to different problems.” Id. We disagree. As Petitioner points out, both Tajima and Foster are in the field of securing data, as is the ’116 patent. Pet. Reply 13–14 (citing Ex. 1005 ¶ 44; Ex. 1006 ¶ 3). Dr. Bhattacharjee testifies, “Tajima and Foster also both describe techniques for securing data using encryption and securely storing keys with encrypted data.” Bhattacharjee II Decl. ¶ 35 (citing Ex. 1005 ¶¶ 109–114; Ex. 1006 ¶¶ 64–71). Patent Owner argues Foster’s disclosure of a KEK would have been “redundant” to Tajima’s key-securing obfuscation technique. PO Resp. 18. We find this argument is unavailing. As Petitioner points out, Patent Owner’s argument “ignores Tajima’s vulnerability that Foster’s key-encryption addresses.” Pet. Reply 16. More specifically, “[r]equiring an attacker to obtain KEKs to decrypt Tajima’s encryption keys in addition to de-obfuscating them is not ‘redundant’ to only having to de-obfuscate them.” Pet. Reply 16 (emphasis omitted) (citing Bhattacharjee II Decl. ¶¶ 41–44). We find that Petitioner’s argument for combining the references is persuasive for the reasons given. Patent Owner further argues that Tajima and Foster address different problems and disclose solutions that are “fundamentally at odds.” PO Resp. 9–16, 25–27. Patent Owner asserts that “Foster’s system requires synchronizing the transmission of encrypted content packets with the keys used to encrypt those packets, so that each packet can be viewed immediately upon receipt.” Id. at 15 (emphasis omitted). Patent Owner attaching it to a different data fragment, the problem Foster sought to solve is the ‘need . . . for a key used to encrypt content to be itself encrypted, and transmitted as an integral part of the [same] content.’” Id. (alterations in original) (citing Ex. 1006 ¶ 7). We are not persuaded by this argument. As noted supra, for the reasons given, we find that both Tajima and Foster are in the field of securing data from unauthorized access. Pet. Reply 13. Furthermore, as Petitioner points out, we find that in Petitioner’s combination of Tajima and Foster, Tajima’s data (which does not require synchronization) is secured, not Foster’s. See Pet. 34–36 (providing reasons for encrypting Tajima’s keys); Pet. Reply 17–18 (“Synchronization of Foster’s data is irrelevant to Tajima-Foster because Tajima-Foster does not restore Foster’s data.”). Thus, we find that Patent Owner’s argument based on the need to synchronize Foster’s data for streaming is unavailing. We have considered Patent Owner’s other arguments and find them lacking. See, e.g., Patent Owner’s Sur-reply, which repeats the arguments that Tajima and Foster are in a “different field,” “fundamentally at odds,” “[i]n direct contrast,” and that applying Foster’s KEK teachings to Tajima would be “redundant.” PO Sur-reply 2–9. For reasons already discussed, we find these arguments unconvincing. In sum, we find for the reasons given that Petitioner has proved by a” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayMotivation not foundNot shown unpatentable
“Dr. Rubin explains that Kerckhoff’s Principle “holds that a cryptosystem should be secure, even if everything about the system, except the key, is public knowledge.” Rubin II Decl. ¶ 94. Citing this testimony, Patent Owner argues, “Shyu’s anti-piracy system is a prototypical attempt to achieve security through obscurity, to the extent it proposes to conceal or obscure the encryption algorithms.” PO Resp. 33. Petitioner does not persuasively respond to this argument. Pet. Reply 20–21. Petitioner argues that “Shyu does not use secret algorithms.” Id. at 20. Instead, according to Petitioner “Shyu selects from among known algorithms to secure different data segments.” Id. However, we find Shyu’s disclosure that “the scrambling algorithm and the key word for the source data are dynamically changed to effectively guard against piracy” is telling evidence that the underlying algorithms themselves are not secure, and therefore Kerckhoff’s principle applies here. See Ex. 1016, 1:37–39. We also find persuasive reasoning in Patent Owner’s assertion that “[c]ombining associated with maintaining multiple encryption algorithms and tracking encryption algorithm ‘metadata,’ without providing any substantial security.” PO Resp. 34–35. In sum, for the reasons given, we agree with Patent Owner that Petitioner fails to prove sufficiently that a person of ordinary skill would have been motivated to combine Tajima and Rivest. Further, Petitioner fails to demonstrate that even assuming that Tajima and Rivest would have been combined, a person of ordinary skill would have further combined their teachings with Shyu.” slip op. at 25
Patent outcomesUS 11,178,116 mixed§ 103 obviousnesscites PhillipsPatents in suitUS 11,178,116
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.