• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

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

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

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

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.No claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,574,894
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,958,840
• DBR Finance, Inc. v. Rugged Cross Hunting Blinds, LLCNo claims unpatentable
  PTAB · May 29, 2025 · IPR2024-00291 · APJ Cynthia L Murphy · IPR · Final written decision

  The Board held claims 1–19 not unpatentable because Petitioner did not prove the proposed Whybrew–Strength combinations disclosed the claimed mesh panels with spaced holes.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We question, therefore, whether someone having an education in textile engineering or physics, but no experience in the field of hunting blinds, would be consistent with the level of skill portrayed by the ’535 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that Petitioner’s expert’s experience, education, and qualifications are rooted in textiles, fibers and physics, and sophisticated subjects related thereto. See Ex. 1007 ¶¶ 14–20. But his deposition revealed that he has little or no experience in the field of hunting blinds. See Ex. 2038, 8–14.5 5 The same might be said of Patent Owner’s expert. See Ex. 2031, ¶¶ 6–7; Ex. 1023, 16. However, our obviousness analysis leaned lightly, if at all, on her declarations and testimony.” slip op. at 12

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

    “1. Mesh Material In the Petition, Petitioner asks that “the term ‘mesh material’” be interpreted in accordance with “a plain and ordinary usage.” Pet. 25. Per Petitioner, the “plain and ordinary” meaning of the term “mesh material” is “a woven material of open texture with spaced holes therein.” Id. Per Petitioner, “[o]ther typical terms used to describe a mesh-like material” are “a screen material, or a netting material, which are believed to be synonyms.” Id. Patent Owner does not dispute that a mesh material would have an open texture with spaced holes therein. See PO Resp. 18. We find that Petitioner’s proposed construction aligns with the ’535 Patent’s specification. See Ex. 1001. The drawings in the ’535 Patent depict the mesh material 26 as having an array of uniformly spaced circular holes forming a net-like structure (see id., Fig. 1A, 1B, 4, 9) or an array of uniformly spaced rectangular openings (see id. Fig. 8) forming a screen-like structure. The embodiments of the mesh material 26 listed in the ’535 Patent (e.g., a mesh banner material, scrims, a network of fibers, etc.) are materials having net-like or screen-like structures. See id. at 6:47–7:28.6” slip op. at 14

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

    “Our construction aligns with the claim language; Petitioner’s proposed construction does not. See Ex. 1001, 10:4–19. The independent challenged claims set forth “one or more panels of mesh material” and then set forth “said one or more panels comprising: a first side with a camouflage pattern; and a second side with a dark color coating.” Id. at 10:4–11. The recited “said one or more panels” corresponds to the previously recited “one or more panels of mesh material,” not panels comprising a material that was only a “mesh” prior to printing/coating. See id. Also, the independent challenged claims set forth that “the one or more panels of the mesh material define an outer surface of the camouflage structure.” See id. at 10:18–19, 1:23–24 (emphasis added). And the panel(s) defining a hunting blind’s outer surface would include the dark color coating. Our construction aligns with the ’535 Patent’s specification; Petitioner’s proposed construction does not. See Ex. 1001. The ’535 Patent repeatedly describes the relevant panel material in the hunting blind (i.e., post printing/coating) as a mesh material. See id., Abst., 1:19–5:34, 6:47–7:28, 9:16–54, Figs. 1A, 1B, 9. The ’535 Patent expressly describes and depicts the mesh material 26 as including the camouflage pattern and the dark-color coating. See id. at 1:52–56, 3:24–25, 3:31–33, Figs. 1A, 1B. The ’535 Patent says that “panels” of this coated mesh material 26 “are used to form” a hunting blind. Id. at 3:22–26. The ’535 Patent says that “[m]esh material is presented for a hunting blind with a camouflage pattern printed on a first side and a second side with a color coating.” Id. at Abst. The ’535 Patent says that “mesh material of interwoven fabric is provided for a hunting blind including a camouflage pattern printed on a first side and a second side with a dark color coating.” Id. at 1:19–22; see also id. at 1:44–49. Our construction aligns with the ’535 Patent’s prosecution history; Petitioner’s proposed construction does not. See Ex. 1006. As mentioned above, throughout prosecution of the ’535 Patent, the same prior art material was mapped to the claimed panel(s) of mesh material. See Ex. 1006, 64–72, 122–106. The mapped-to prior art mesh material was described during prosecution as an “interwoven fabric” with “a pattern” printed on a first side and “a dark color coating” on a second side. Ex. 1006, 64; see also id. at 122. And the mapped-to prior art mesh material (i.e., which included not only the interwoven fabric but also the printed pattern and the dark color coating) had a “net-like structure” with an array of uniformly spaced “net holes” that are “not closed.” Ex. 2021, 4:1–5, see also id. at 2:58–3:6, 4:34–45, Figs. 1, 2a. Thus, we understand that claimed panel(s) of mesh material must have” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “However, Patent Owner does not bear the burden of proving Strength’s camouflage material 10 does not have holes. Rather, Petitioner bears the burden of proving that Strength’s camouflage material 10 does have holes. And Petitioner’s arguments that undermine Patent Owner’s position that Strength’s camouflage material 10 does not have holes, concurrently undermine Petitioner’s position that Strength’s camouflage material 10 does have holes. Per Petitioner, “Strength is silent on whether visible holes exist in the fabric” (Pet. Reply 8) and “the Strength reference doesn’t discuss anything about holes” (Tr. 14). Petitioner’s expert testified that it was his “understanding that Strength is silent” on “whether or not there are holes.” Ex. 2038, 44. Petitioner contends that Strength’s silence about the presence/ absence of holes hinders Patent Owner from proving that Strength’s camouflage material 10 does not have holes. See Pet. Reply 8. We agree. But this same silence likewise hinders Petitioner from proving that Strength’s camouflage material 10 does have holes.” slip op. at 35

  Patent outcomesUS 11,399,535 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,399,535
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

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

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

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

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

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

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00996 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, and 18 were not shown unpatentable as obvious over Pisanich or the PSO Manual because neither adequately taught the claimed QIE module.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “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).” slip op. at 33

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Pet. 8–9 (citing Ex. 1004 ¶ 43). Patent Owner’s asserted level of ordinary skill in the art mirrors Petitioner’s except that Patent Owner contends that “a general knowledge of advertising and virtual reality . . . do not specifically apply to the ‘165 Patent.” PO Resp. 5. The ’165 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’165 patent describes in one embodiment “a method of integrating holographic images into a virtual thematic environment using a computerized system” and “that the computer system of the present invention provides product placement in a virtual thematic environment.” Id. at 3:32–33, 40–45. Although virtual reality and advertising are not claim elements in this case and do not play a specific role in our analysis below, because the ’165 patent specifically contemplates the integration of advertising and virtual environments we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’165 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 11

  • Prior constructionPrior construction adoptedNo construction neededDecided for patent owner

    “Having considered the complete record now before us, and where both parties have deferred to the District Court’s constructions, there is no actual dispute as to the meaning of any specific claim terms in this proceeding and we determine that no express additional claim construction is necessary for any particular claim term. Like the parties, for purposes of this Decision we adopt, and where appropriate refer to, the District Court’s claim constructions and also to Patent Owner’s additional interpretations of “client” and “server.” We note that neither “software layer” nor “types,” as set forth in the District Court’s construction of the QIE module is recited in the claims of the ’165 patent. To the extent necessary, we address the terms “types,” “software layer,” “client,” and “server” in our analysis below in the context of the claims and written description of the ’165 patent. See, e.g., Ex. 1001, 12:34–37 (The ’165 patent describing that “[i]n a client-server environment, at least one client and at least one server are each connected to a network such as a Local Area Network (LAN), Wide Area Network (WAN), and/or the Internet, over a communication link.”). We make another observation regarding the claimed “quantum imaging environment (QIE) module” referenced as 202/211 in Figure 2 of the ’165 patent. A QIE is discussed throughout the specification as relating to both a “QIE engine” and a “(QIE) module.” Id. at 6:6, 16:47. Apart from the broad description that QIE 202/211 is a software layer, and includes “an interpreter” which “allows developers to develop objects and applications from the interpreter,” and that the “interpreter [] will take all of the rich content, interpret the information into objects to be manipulated and accessed via any device and place these objects or information in the the software architecture of the QIE itself and how it actually handles, manipulates, or converts information or content into specific formats. Id. at 15:55–59.7 Apart from adopting the District Court’s claim constructions, we need not further expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

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

    “In summary, we find that Pisanich discloses to a person of ordinary skill in the art a computer game system that incorporates real world data into multiple games, and even games with different themes, but not a QIE for accomplishing these tasks for different devices. Ex. 1004 ¶ 17. We find insufficient evidence by Petitioner and Mr. Crane that a person of ordinary skill in the art, considering Pisanich, would have understood that multiple games included multiple games on different devices as required by the District Court’s claim construction of a “QIE module”—that is “a software layer which receives and interprets content such that the content is manipulated so as to be accessible on different types of devices for use within the virtual thematic environment.” Ex. 1009, 4–7 (emphasis added). Independent Claim 18 Independent claim 18 recites the same limitation of “providing a quantum imaging environment (QIE) module in one of the client or the server system” as in claim 1[b]. Consequently, our analysis of the corresponding limitations of claim 1[b] applies also to claim 18. For the reasons given for claim 1, we find that Petitioner has failed to show by a preponderance of the evidence that claim 18 would have been obvious over Pisanich.” slip op. at 36

  Patent outcomesUS 10,991,165 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,991,165
• Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentable
  PTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10

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

    “Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “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).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19

  Patent outcomesUS 10,846,941 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,846,941
• Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,653,414

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.