• Everstar Merchandise Co., Ltd. v. Willis Electric Co., Ltd.Some claims unpatentable
  PTAB · Dec 18, 2025 · PGR2019-00056 · APJ Stacey G White · PGR · Remand

  Claims 2–7, 9–19, 21–25, 27, 30, 31, and 33 are unpatentable as obvious; Petitioner did not prove claims 8, 20, 26, 28, 29, and 32 unpatentable.

  RulingsRemand decision

  • RemandMixed

    “The Federal Circuit found that “[t]he factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan,” concluding “[n]othing more is required to establish a motivation to combine.” Everstar II, 2025 WL 1501940, 4. The Federal Circuit observed that “Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1,” and accordingly, “reverse[d] the Board’s patentability determination as to that claim and vacate[d] the Board’s judgment as to the remaining claims of the ’037 patent,” remanding to us for further proceedings. Id. at 4–5. With those instructions in mind, we review the Petitioner’s allegations regarding claims 2–33.” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “F. Person of Ordinary Skill in the Art In the First Final Written Decision, we determined that a person of ordinary skill in the art “would have (1) at least two years of experience in the design of decorative lighting, or (2) at least a bachelor’s degree in mechanical engineering, electrical engineering, or an equivalent field, and a basic familiarity with circuits used in decorative lighting.” Paper 40, 12. We see no reason to depart from that earlier determination.” slip op. at 12

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

    “The parties agree that we do not need to construe any claim terms. Pet. 8–9; PO Resp. 16–17. We likewise agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 13

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

    “Patent Owner did not dispute that the combined teachings of Kumada and Debladis ’120 disclose each limitation of claim 1. Patent Owner, however, did dispute Petitioner’s proposed reasons for combining Kumada and Debladis ’120, and argues that Debladis ’120 is not analogous art. PO Resp. 36–61. The Federal Circuit stated that substantial evidence only supports the conclusion that a POSA would have been motivated to combine the teachings of Kumada and Debladis ’120. The factual record and Willis’s concession on appeal conclusively establish that the cost of copper was a known problem in the art, Debladis ’120 (and Kumada) helped address that issue, and Willis has not disputed that combining the teachings of Kumada and Debladis ’120 was within the skill of an ordinary artisan. Nothing more is required to establish a motivation to combine. Given that Willis has conceded that the combination of Kumada and Debladis ’120 disclose all the limitations in claim 1, we reverse the Board’s patentability determination as to that claim and vacate the Board’s judgment as to the remaining claims of the ’037 patent. Everstar II, 2025 WL 1501940, 4 (internal citations omitted). The Federal Circuit further noted Patent Owner’s secondary considerations arguments as to claim 1 and stated [t]he cited evidence consists only of a temporal connection between the introduction of Willis’s invention and the UL 588 standards, and deposition testimony of a single witness who seemingly disclaimed any connection between the two. This is not sufficient to rescue a claim as to secondary considerations. Id. at 4, n. 5 (internal citations omitted). Accordingly, the Federal Circuit ruled that claim 1 would have been obvious over Kumada and Debladis ’120. 6. Analysis of Independent Claim 33” slip op. at 17

  Patent outcomesUS 10,222,037 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,222,037
• Apple Inc. v. Ferid AllaniInstituted
  PTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

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

    “We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8

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

    “We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 10,943,058
• Kohler Co. v. Delta Faucet Co.Some claims unpatentable
  PTAB · Oct 1, 2025 · IPR2024-00700 · APJ Jane E Inglese · IPR · Final written decision

  Claims 1, 2, and 9 are unpatentable as obvious; claims 3–8 and 10–24 were not shown unpatentable because the asserted references failed to establish limitations including the claimed light pipe features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s definition of a POSITA. Petitioner’s witness (Mr. Cook) qualifies as a POSITA under this definition, and, therefore, is qualified to opine from the perspective of a POSITA on technical matters included within the areas of expertise prescribed by the definition. As indicated above, Petitioner’s definition of a POSITA does not require education in the field of optics and professional experience designing or analyzing optical apparatus, unlike Patent Owner’s definition. We are aware, however, that Patent Owner’s witness (Dr. Klopp) has more extensive experience with optical systems and methods than Petitioner’s witness (Mr. Cook). Compare Ex 1003 ¶¶ 8–14, Ex. 2005, 39:21–59:17, with Ex. 2003 ¶¶ 3–20, Ex. 2004, 1–2, Ex. 1015, 10:22–13:25. Although Mr. Cook possesses excellent credentials in the field of mechanical engineering, his experience in the design and analysis of optical systems and methods is sparse and insubstantial compared to that of Dr. Klopp. Id. Due to this difference in experience levels, in instances where the witnesses express differing views on factual issues related to optical systems and methods, we will accord more weight to Dr. Klopp’s testimony than to Mr. Cook’s.” slip op. at 8

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “through the light transmission portion and bottom output face 313 of light conductor 38, which teaches transmitting light in parallel with the longitudinal axis of the housing. Tseng does not disclose or teach that light is emitted through the side surface of annular protrusion 383 in a direction perpendicular to the longitudinal axis of the housing. Ex. 1004 ¶ 97. Petitioner’s assertions that this would be the case consist solely of conclusory statements, supported only by citations to Mr. Cook’s declaration. Mr. Cook, however, simply repeats Petitioner’s conclusory statements, without providing sound technical reasoning supported by objective evidence to explain and support his opinions. Ex. 2003 ¶¶ 101– 102, 105, 195–198, 202. We, therefore, accord little weight to Mr. Cook’s opinion on this particular matter because it “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” and “does not cite to any additional supporting evidence or provide any technical reasoning [in] support.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). Furthermore, Mr. Cook’s opinion conflicts with that of Patent Owner’s witness, Dr. Klopp, who opines that a “POSITA would understand from Tseng’s third embodiment that light from the LED would bypass the annular protrusion 383 of outer cliff 381, while transmitting downwardly toward the output face 313.” Compare Ex. 1003 ¶¶ 174–175, 190–194, with Ex. 2003 ¶¶ 101–102, 105. As discussed above, Mr. Cook is qualified to opine from the perspective of a POSITA on technical matters included within the expertise of a person meeting Petitioner’s definition of a POSITA, which do not include optics and optical apparatus. We, therefore, credit Dr. Klopp’s opinion over that of Mr. Cook on this particular factual issue of how it is directly related to optical systems and methods about which Mr. Cook possesses limited relevant experience. See Ex. 1003 ¶¶ 6–15 (experience in communication systems and electronics); Ex. 2005, 55:16–58:19 (design experience with electronics that use indicator lights or fiber-optic communications; no professional experience with light pipes, diffusers, or plumbing fixtures). Dr. Klopp possesses substantial research and professional experience with optical methods, fiber optic light pipes, light guides, diffusers, prisms, and analysis of faucets, spray heads, and plumbing fixtures. See Ex. 2003 ¶¶ 6–10 Supra 8 (discussing weight accorded to conflicting witness testimony); see also Resp. 2–3 (arguing that “Petitioner’s expert, Mr. Cook, is a mechanical engineer with substantial professional experience in electronics for high-voltage power systems and communications, but he has limited experience with the claimed subject matter.”).” slip op. at 34

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

    “would be used to construe the claim[s] in a civil action [held] under 35 U.S.C. 282(b).” 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 when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe terms in controversy only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that the claim terms do not require construction and should be afforded their plain and ordinary meaning. Pet. 13. Patent Owner contends that it applies the plain and ordinary meaning of the claim terms. Resp. 7. Taking into consideration the information presented, we determine that none of the claim terms requires express construction for purposes of resolving the dispute before us.” slip op. at 9

  • BurdenMixed

    “perpendicular to the longitudinal axis of Tseng’s housing (internal 33 and external 34 sleeves). “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.” In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (quoting Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)); see also Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1306 (Fed. Cir. 2017 (en banc (quoting Magnum Oil)).” slip op. at 40

  Patent outcomesUS 10,393,363 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,393,363
• Ceva Santé Animale S.A. / Egg-Chick Automated Technologies S.A.S et al. v. Targan, Inc.Some claims unpatentable
  PTAB · Jul 24, 2025 · IPR2024-00595 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–15 are unpatentable as obvious over the asserted §103 grounds; Petitioner did not show claims 16–18 unpatentable because the angled-conveyor combination lacked a supported rationale.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In determining 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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us, including the ’124 patent, the Gershman, Pierre, Yavnai, Tao, and Goodwin references, and the background and qualifications of both sides expert witnesses that reflect the knowledge and experience of a POSITA, including knowledge of systems for assessing and transporting poultry in an industrial setting. Patent Owner’s proposed skill level overlaps with Petitioner’s proposed skill level, and any differences would not alter the outcome of this proceeding. Therefore, we adopt Patent Owner’s proposed skill level with two modifications. A POSITA also could have a Bachelor of Science degree in Animal Science or similar discipline, and a POSITA would be familiar with techniques for assessing and transporting poultry in an industrial setting, such as visual and/or anatomical characteristics of a chick.” slip op. at 7

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

    “Therefore, we find that Applicant distinguished Tao from “an unrestrained chick” because in Tao’s automated system a chick is restrained—the chick is held in place—by a retainer unit on a moving platform, whereas in Applicant’s claimed system a chick is not held in place on a moving platform. We further conclude that Applicant’s reason for distinguishing the claimed invention over Tao informs the claim construction even if the “prosecution history statements do not rise to the level of unmistakable disavowal . . . .” Personalized Media, 952 F.3d at 1345 (Fed. Cir. 2020). In view of the ’124 patent claims, specification, and prosecution history, we determine “an unrestrained chick” is a chick not held in place on the moving platform and free to open its wings.” slip op. at 19

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

    “For the reasons given below, we find the Petition has established that Gershman discloses and teaches “a moving platform to support an unrestrained chick of a particular breed” by a preponderance of the evidence.” slip op. at 29

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

    “to determine a characteristic [of the chick] . . . [that] manifests in one of two or more possible states, e.g., sex (male vs. female), health (healthy vs. unhealthy), genetic mutation (present vs. not present).” Reply 13 (citing Ex. 1004, 3). The recitation of a generic “database of images” does not distinguish limitation [1.4] from the asserted combination of Gershman-Pierre, particularly in view of Pierre’s disclosure of “a computerized processing process is implemented in order to compare the captured images to reference images,” as asserted in the Petition. Ex. 1004, 3 (emphasis added); see Pet. 23–24 (citing Ex. 1003, 2–5; Ex. 1004, 3, 5). Thus, we find that storage of Pierre’s reference images of male and female wing feathers in a database used for comparison in Gershman’s computerized digital chick image processing system would have been obvious to a POSITA and satisfies limitation [1.4].19 We agree with Petitioner that it would have been obvious and well within the skill level of a POSITA—someone with a Bachelor of Science degree in agricultural, industrial, or electrical engineering and two years of experience in industrial poultry sexing and/or image processing (Resp. 20)—to store reference images as taught by Pierre in a “computerized processing” database. The rationale argued by Petitioner, to organize the collection of reference images for comparison to determine whether the characteristic of interest was present, finds direct support in Gershman and Pierre. Both references disclose comparing digital images of a chick’s wing feathers to reference data (Gershman) or reference images (Pierre) of male and female chick wing patterns. Pet. 23–24; Reply 12–13. Storing digital reference images in a database for comparison to captured digital images is, moreover, a basic and straightforward task in any computerized image processing” slip op. at 44

  Patent outcomesUS 10,806,124 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,806,124
• Keysight Technologies, Inc. v. Centripetal Networks, LLCAll claims unpatentable
  PTAB · Nov 1, 2024 · IPR2022-01421 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–30 are unpatentable: claims 1–5, 8–24, and 26–30 as obvious over Roese, Golnabi, Huima, and Hayter; claims 6, 7, and 25 with Esbensen added.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, supported by Dr. Jacobson’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience, and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber-attacks.” Pet. 5 (citing Ex. 1003 ¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art, and points to an equivalent level adopted in the ’148 FWD. See PO Resp. 6. We find Petitioner’s proposal consistent with the level of ordinary skill in the art 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), and, ordinary skill in the art for purposes of this Decision.” slip op. at 8

  • PTAB / AIA Trials › §315(e) estoppelMixed

    “Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” slip op. at 9

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

    “caching occur “while the rule sets are being swapped.” Id. at 14–15. Patent Owner recites the surrounding steps or processes to the “caching the one or more packets” limitation, and asserts that the limitation requires “the packets are cached while the rule sets are being swapped.” Id. Although Patent Owner has provided the context of the claim limitation, we are not persuaded that such a stricture needs to be imported into the claim limitation itself. The “caching the one or more packets” limitation itself does not require that such caching can only occur while the rule sets are being swapped. The plain meaning of caching packets alone does not require such a restriction. The independent claims employ “comprising” language and could allow, for example, for the caching of packets, after the signal to process packets in accordance with the second rule set has been received, even if the swapping of rule sets has not yet occurred. Patent Owner’s construction attempts to incorporate other aspects of the claims into a single limitation that is not so limited under its plain and ordinary meaning. We are not persuaded that specifying when the caching occurs, i.e., while the rule sets are being swapped, is integral to the plain and ordinary meaning of “caching the one or more packets.”” slip op. at 13

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

    “to its temporal aspect of when caching of packets occurs, i.e., its claim construction that such caching occurs during a swapping of rule sets. As discussed above in Section II.B, we are not persuaded that the limitation “caching the one or more packets” requires that the caching must occur only while the rule sets are swapped. We are persuaded, however, that Roese, Huima and Hayter teach, as proposed by Petitioner, the caching of at least some portion of a packet while rule sets are being swapped. the rapid response identifier signal is received, the response system initiates the process of configuring the forwarding engine with the one or more policies and/or PERs, and Huima teaches that in response to receiving a signal to change the rule set, packet processing pauses. Ex. 1005 ¶¶ 47, 52; Ex. 1006 ¶ 31. We agree with Petitioner’s assertion that persons of ordinary skill in the art would have understood that a network device should pause the processing of any pending packets and any incoming packets that arrive after the instruction to change the rule set but before the change is completed, in view of Roese and Huima. Pet. 38 (citing Ex. 1003 ¶ 171). Further, we continue to be persuaded that Hayter teaches using a packet processor with an integrated cache to store at least portions of packets in the L2 cache, and we are persuaded that such storage would occur while awaiting processing to begin again. Pet. 39–40 (citing Ex. 1007, 1:40–48, 3:53–59, 6:3–26, 24:34– 36; Ex. 1003 ¶¶ 178–179). We are persuaded that this teaches or suggests that any caching of packets, or portions thereof, would occur in the period between when a signal is received to change rule sets and when processing of packets reoccurs under the new rule set. As such, we consider Patent Owner’s arguments in the context of whether the combination of Roese, Golnabi, Huima, and Hayter would have taught or suggested to one of ordinary skill in the art that entire packets should be cached in the combined system.” slip op. at 26

  Patent outcomesUS 10,681,009 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,681,009
• Google LLC v. Parus Holdings, Inc.No claims unpatentable
  PTAB · Aug 1, 2024 · IPR2022-00279 · APJ David C Mckone · IPR · Final written decision

  Claims 1 and 2 were not shown unpatentable over either Kovatch and Burrows or Wise and Burrows because the combinations did not teach the claimed polling and rank-decrease limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Lipoff, contends that a person of ordinary skill in the art “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” and that “[m]ore education could substitute for less experience, and vice versa.” 5 The complete record does not include allegations or evidence of objective indicia of nonobviousness. same proposal. PO Resp. 1. On the complete record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art and adopt Petitioner’s proposed level of skill.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed

    “From this description in Burrows, it is clear that index 70 has no sense of ranking, and that Burrows’ system overall has no sense of ranking prior to a query; thus, adding or deleting a webpage from the index does not change a ranking that does not yet exist. It is also clear that, if a page is flagged as deleted, it will be ignored by the query module when the query module queries the index and ranks the identified qualified pages. Id. at 15:12–16, 15:21–22. The webpage’s rank is not decreased, as the webpage is never ranked in the first place. As Mr. Occhiogrosso testifies: web page. A “polled web site” page cannot be ranked in the Burrows system because the Burrows ranking is performed only after a user query is performed. Only at that time can the Burrows system provide a ranked list (of qualified webpages) for presentation to the user. As Burrows discloses, the Automated Web Browser is robotic in nature and not associated with the queries of users. Ex. 2009 ¶ 181. Mr. Occhiogrosso’s testimony on this point is consistent with Burrows’ description, credible, and entitled to substantial weight. We have considered Mr. Lipoff’s testimony that a skilled artisan “would have understood that combining Burrows’s polling mechanism receiving no response into Kovatch would decrease the entries’ ranking or placement in Kovatch’s destination tree in order to further limit the pages that may not be of interest to the user.” Ex. 1002 ¶ 172 (citing Ex. 1006, 1:38–46). That testimony, however, is conclusory and lacks persuasive reasoning. Moreover, the passage in Burrows to which it cites (Ex. 1006, 1:38–46) does not teach or suggest decreasing the ranking of webpages. Thus, Mr. Lipoff’s testimony on this point lacks credibility and is entitled to little weight. Upon consideration of the complete record, we are not persuaded that Kovatch and Burrows teach claim limitations 1H and 2H.” slip op. at 22

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In the Reply, Petitioner argues that “the type of database record that Burrows polls and ranks makes no difference for this teaching; processing costs and cycles, equating to processing time, are a potential issue any time computer processing occurs.” Reply 20 (citing Ex. 1061 ¶ 24). Mr. Lipoff repeats this statement in his testimony without identifying the basis for it, rendering that testimony of little value. Ex. 1061 ¶ 24. In any case, it appears that Petitioner and Mr. Lippoff are arguing that a general notion of processing cost any time computer processing occurs would lead a skilled artisan to decrease a webpage’s rank based on response time. This is a new argument, not presented in the Petition, and is therefore forfeited and will not be considered. In any case, Petitioner has not supported this new argument with persuasive evidence.” slip op. at 31

  • BurdenFwd all claims patentableNot shown unpatentable

    “In sum, for several reasons, Petitioner has not shown that Kovatch and Burrows teach claim limitations 1H–1J and 2H–2J and, therefore, Petitioner has not shown that Kovatch and Burrows teach each limitation of claims 1 and 2. 4. Conclusion of Nonobviousness As explained above, Petitioner has failed to show that the combination of Kovatch and Burrows teaches each limitation of claims 1 and 2. Upon consideration of all the evidence, we conclude that Petitioner has not proved by a preponderance of the evidence that claims 1 and 2 would have been obvious over Kovatch and Burrows.” slip op. at 32

  Patent outcomesUS 6,721,705 not shown unpatentable
  § 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,721,705
• Roofr Inc. v. Pictometry International Corp.All claims unpatentable
  PTAB · Jul 11, 2024 · IPR2023-00435 · APJ Garth D Baer · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–8, 10–13, and 15–17 as obvious over Pershing-789 and Abhyanker; claims 9 and 14 over the Pictometry combination; and claims 1–17 over Kennedy, Abhyanker, and Bailey.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We agree with Petitioner that Mr. Cummings qualifies as a skilled artisan. Pet. Reply 2–7. As Petitioner notes, the ’800 patent’s computer-related features are fairly basic—i.e., “standard computer input devices, applications, and graphical user interface elements” that “would be familiar to and understood by one” with experience like Mr. Cummings’s. Pet. Reply 5–6 (citing Ex. 1001). As we explained in our Institution Decision, “[a]lthough Mr. Cummings may lack formal computer-related education, he ‘ha[s] extensive experience using software related to construction’ including ‘decades working with software related to construction modeling and estimation.’” Paper 16, 8 (quoting Ex. 1003 ¶ 6). Mr. Cummings also “ha[s] experience collaborating with software developers to create new software in my field.” Id. In light of the ’800 patent’s basic computing features, Mr. Cummings’s experience is sufficient. In addition, we do not find it problematic that the Petition repeats certain portions of Mr. Cummings’s testimony. Though portions of the Petition may be the same as Mr. Cummings’s testimony, that does not by itself undermine the testimony’s persuasiveness or its status as evidence, nor does it mean Petitioner’s arguments are conclusory, as Patent Owner suggests. See PO Resp. 37–39.” slip op. at 6

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

    “In an inter partes review proceeding, we construe patent claims using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 2; see generally PO. Resp. We agree that no claim terms require express construction for purposes of this Decision.” slip op. at 5

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

    “Moreover, Petitioner’s proposed combination is sufficient for obviousness even if we accept Patent Owner’s proposed temporal requirement. Specifically, Petitioner’s rationale for adding Abhyanker’s user inputs (i.e., “allowing a user to designate a geographic position of a roof and to subsequently confirm that the roof location is correct would promote the accuracy of the system,” Pet. 24, 67 (emphasis added, Petitioner’s emphasis omitted)), explains why one skilled in the art would have provided Abhyanker’s lock pushpin option after placing a marker. See also Ex. 1003 ¶¶ 43, 127. Patent Owner’s argument, in contrast, assumes a skilled artisan could do no more than bodily incorporate Abhyanker’s placement and lock features without any thought as to sequence. That, however, is not the test for obviousness. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (noting that “a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). For these reasons, and in light of the Petition’s analysis, see Pet. 24– 25, 33–35, 67, 74, we agree with Petitioner that its proposed combination teaches “responsive to receiving the designation of the building roof structure location, providing a second computer input capable of signaling user-acceptance of the building roof structure location within the first image, wherein user-acceptance is one or more affirmative steps undertaken by the user to confirm the designation of the building roof structure location,” as claimed.6” slip op. at 11

  Patent outcomesUS 10,648,800 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,648,800
• Keysight Technologies, Inc. v. Centripetal Networks, Inc.Some claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01097 · APJ Aaron W Moore · IPR · Final written decision

  Claims 1–3, 5–13, and 15–20 are unpatentable as obvious; claims 4 and 14 were not shown unpatentable because Sourcefire did not disclose the claimed responsive updating of an existing packet flow log entry.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not address this issue, and neither side argues that it might affect the patentability analysis or otherwise change the outcome. Thus, as 2 Sourcefire 3D System User Guide, Ver. 4.10, Mar. 16, 2011 (Ex. 1004). 3 U.S. Patent App. Pub. No. 2015/0207809 A1 (Ex. 1029). we did at institution, we apply Petitioner’s description of an ordinarily skilled artisan, as we find it consistent with the ’917 patent and the asserted prior art. B.” slip op. at 11

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

    “1. Threat Identifier and Threat Indicator Patent Owner identifies two terms that were construed in the ITC investigation involving the ’917 patent based on constructions agreed upon by the parties. PO Resp. 9. First, the parties in the ITC investigation agreed that “threat identifier” means “information that identifies one or more network threats.” Id. at 11 (citing Ex. 2004, 3). Second, the parties further agreed that “threat indicator” means “information that indicates a resource associated with a network threat,” “[f]or example, network addresses, ports, FQDNs, URLs, URIs, the type of threat, geographic information, anonymous proxies, actors, or the like.” Id. at 11–12 (citing Ex. 2004, 3). Patent Owner asserts that these constructions should be used in this proceeding. Id. at 12. Petitioner does not dispute these constructions, and we adopt them.4” slip op. at 12

  • ExcludeMotion to exclude, grantedGranted

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  • Expert testimonyDecided for petitioner

    “Before we get to claim construction, we exclude Ex. 2018 as untimely because Patent Owner had the testimony before it filed the Response and was plainly aware of it, as it was alluded to in the Response. See PO Resp. 10; Mot. to Exclude Opp. 2 (admitting that the trial finished before the Response was filed and that Patent Owner filed other testimony excerpts with the Response). However, the exclusion is of little consequence because we find that the testimony would be devoid of probative value. Dr. Rubin is not a fact witness and has not been offered as an expert in this case. Patent Owner cites the testimony in an effort to show that Petitioner is taking inconsistent positions, but we fail to see how Petitioner’s conduct bears on the meaning of “flow” in the ’917 patent.” slip op. at 14

  Patent outcomesUS 10,193,917 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,193,917
• Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentable
  PTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed

    “appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13

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

    “to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26

  Patent outcomesUS 9,033,250 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,033,250
• Kiosoft Technologies, LLC / Techtrex, Inc. v. Payrange Inc.Some claims unpatentable
  PTAB · Dec 14, 2022 · PGR2021-00093 · APJ Ken B Barrett · PGR · Final written decision

  Claims 1–6, 8–10, 14, 15, and 18–25 are unpatentable under § 101; claims 7, 11–13, 16, and 17 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. The Level of Ordinary Skill in the Art In determining 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) (internal quotation marks and citation omitted). Petitioner contends: A [person of ordinary skill in the art (“POSITA” or “POSA”)] at the time of the earliest claimed filing date of the ’614 Patent would have had an education background of, or practical experience providing an equivalent to, a Bachelor of Science in Electrical Engineering, Computer Science, Information Technology, or a related/equivalent field and at least 3 years of academic or industry experience in electronic payment systems. Pet. 16 (citing Ex. 1003 ¶¶ 5–6). Patent Owner affirmatively states that it does not dispute Petitioner’s asserted educational background of a person of ordinary skill in the art. PO Resp. 7. Patent Owner does not dispute Petitioner’s proposed number of years of experience, instead contending that “the claims are patentable regardless of the number of years of work experience a POSA would have had.” Id. (citing Ex. 2019 ¶¶ 49–58). Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8

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

    “construction disputes to find that Petitioners have failed to satisfy their burden of proof.” PO Resp. 8. Patent Owner goes on to state its agreement with Petitioner’s proposed construction for the “identifying” limitation (id. at 9) and indicate its disagreement with certain of Petitioner’s proposals (id. at 9–14). Patent Owner confirmed at the oral argument that no claim term needs to be construed to reach a dispositive issue. Tr. 33:23–34:5. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes.” slip op. at 11

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “All of the claimed method steps of claim 1 occur “at the mobile device” (element 1.1), and the method includes a step of enabling user interaction with the user interface to complete the vending transaction (element 1.9). Id. at 46:61–65, 47:24–28. Claim 1 does not recite completing the purchase. The ’614 patent describes a commercial transaction completed at the payment accepting unit (i.e. the vending machine), not at the mobile device. Ex. 1001, 7:15–19; see also id. at 16:46–50; 17:57–59; 19:17–20; 19:35–38. We, thus, agree with Patent Owner that the claimed method does not require completing or conducting the transaction, but only enabling the completion of the transaction. On this complete record, we are persuaded that the elements block quoted above recite the concept of identifying a merchant and enabling completion of a purchase from the merchant. See Pet. 20 (arguing that the claimed method “is no less abstract than a customer noticing a store, making a purchase, and receiving a receipt.”); Pet. Reply 5 (arguing that the claim describes “nothing more than a customer noticing and identifying a store amongst multiple stores based on the unique visual image of that store, entering the store and communicating with the merchant, making a purchase, and receiving a receipt—all while using conventional tools.”). In particular, claim 1 recites a step for identifying a merchant based on its advertised presence—identifying a nearby vending machine that is available to accept payment from a mobile payment application, with that identifying involving the broadcasting of predefined radio messages.8 Claim 1 also recites steps for enabling completion of a purchase from the merchant— establishing a communication connection between the user’s device and the vending machine; displaying an interface that allows a user to select a vending machine, to trigger payment for the vending transaction, and to enable the completion of the transaction; and updating the user interface after receiving information from the vending machine regarding the transaction (which, as indicated by dependent claim 3, may be information indicating that the vending transaction was completed). Our slight revision of the abstract idea from what we previously stated in our Institution Decision does not impact the patentability analysis. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptMixed

    “As discussed above, the Specification indicates that the short-range communication between the vending machine and mobile device can be not only conventional technologies such as Bluetooth, near-field communication (NFC), and radio frequency identification (RFID), but also could be “any wired or wireless technology that could be used to communicate a small distance (approximately a hundred feet or closer) that is known.” Ex. 1001, 9:57–67. The Specification ties that technology to the “broadcast” in claim 1 (id. at 47:2–5). For example, the Specification explains that “[e]ach adapter module 100 [of the vending machine] advertises its presence by broadcasting signals (advertising broadcast signals) to mobile devices in the zones 102, 104, 106.” Id. at 10:43–45. “The outermost range is the Bluetooth range 106 . . . [and] is the area in which the adapter module 100 is able to broadcast its presence.” Id. at 18:29–33. Further, Dr. Shamos testified that the Bluetooth protocol requires that two devices wishing to interact with each other identify themselves to each other. Ex. 1030, 102:3– 24. Dr. Shamos also testified that the Low prior art reference discloses that a vending machine identifies itself to the user. Id. at 100:9–20; see Ex. 1007, 2:25–28 (Low stating that, “in some embodiments, multiple machines may send their unique identifiers, such that the user is able to select one or more machines to purchase from.”). Thus, the abstract idea of identifying a merchant is implemented by nothing more than well-known, routine, and conventional wireless communications.” slip op. at 39

  Patent outcomesUS 10,891,614 mixed
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Mayo · Bilski · Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,891,614

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.