- Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · May 14, 2025 · IPR2024-00189 · APJ William V Saindon · IPR · Final written decision
Claims 1–9 were not shown unpatentable because Fujiwara lacks the claimed horizontal position, and Bandy with Fowler lacks the claimed vertical position.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree). Ex. 1009, ¶34. Alternatively, . . . a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field. Id. Additional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above. Id. Pet. 9. Patent Owner applies the same definition. PO Resp. 17. We apply the parties’ proposed level of ordinary skill because it is reasonably consistent with the level of skill implied in the disclosure of the ’340 patent and the cited prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededGranted in part
“c) Conclusion Having reviewed the claim language and the specification, we determine that the claimed planogram stores one piece of data with respect to identification—a unique identifier—and two pieces of data with respect to location—a vertical position and a horizontal position. Further, claim 1 states that each location (i.e., each horizontal/vertical position pair) is unique (“one-to-one”) for each unique identifier. Ex. 1001, 8:25–27. Thus, we determine that no horizontal/vertical position pair will be associated with more than one unique identifier (and vice versa). No other terms require construction at this time. See Realtime, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“taught by “the horizontal position of the electronic shelf label along the horizontal shelf part 21, as shown in FIG. 4.” Pet. 21 (citing Ex. 1009 ¶ 75). Certainly, each shelf label in the real world, as well as in the drawing of Figure 4, has a horizontal position. However, that does not mean that Fujiwara’s database stores information indicating the horizontal position of the shelf label as required by the claim. The claim is not calling for the shelf label to have a location; it is calling for location information to be accessible by the server so that the server can determine the location of the mobile terminal. Ex. 1001, 8:19–24 (claiming a “method being performed by a central server configured to access a planogram associating . . . identifiers . . . with . . . locations . . . defined by a vertical and horizontal position”), 8:41–46 (claiming a method step of “determining a location of the mobile terminal . . . based on . . . the planogram). For example, fields in a database storing horizontal and vertical positions would be sufficient. Id. at 6:31–36 (“The central server 2 determines the location of said mobile terminal 1 from the identifier of said electronic label 3 using the data of a planogram associating a location with the label identifier.”), 7:16–18 (calling for the planogram to be stored in a database). To the extent we accept that Fujiwara teaches a unique identifier (shelf label ID) and a vertical position (e.g., shelf number 21-1), we find Fujiwara to be missing a horizontal position as required by the claim because neither the shelf number nor the shelf label ID provides an indication of where along the shelf the shelf label is located.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“III. PATENT OWNER’S MOTION TO EXCLUDE Patent Owner moves to exclude Exhibits 1013–1021 and 1024–1027. PO Mot. Excl. 1. Our analysis above focuses on a dispositive issue regarding the claimed planogram. We are not apprised of any citations to these documents in the briefing regarding the planogram issue. Indeed, according to Patent Owner, Exhibits 1013–1021 involve one of the issues we did not address, regarding near-field communications. PO Mot. Excl. 3–4. Because this motion involves a question on evidence that is not relevant to the issues discussed in this Decision, we need not rule on the motion at this time. We dismiss Patent Owner’s motion to exclude as moot.” slip op. at 27
Patent outcomesUS 10,674,340 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,674,340 - Hanshow America Inc. / Hanshow Technology Co., Ltd. v. Ses-Imagotag Inc.No claims unpatentablePTAB · Mar 28, 2025 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 1–20 were not shown unpatentable because Wu and the asserted combinations did not teach or suggest the claimed acquisition and transmission of a sequence of shelf label identifiers.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedDecided for patent owner
“identifying information and the label location information[,]’ by extrapolating from the ESL that is already installed as required by steps S104 and S106.” Pet. 16 (citing Ex. 1003, 4:26-28; Ex. 1009 ¶ 81) (third and fourth alterations in original). There is no explanation or reasoning provided in the Petition to support this assertion. See id. We can find no support for this assertion that the method described in Wu requires this undisclosed step or that it could not otherwise possibly work14 to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation from the ESL that is already installed. The only evidence cited in support of this assertion is a short passage in Wu (Ex. 1003, 4:26–28) and paragraph 81 of the Declaration of Dr. Tentzeris (Ex. 1009). This short passage in Wu provides that, “[i]n step S106, the deploying device 130 or the controlling device 120 creates the relationship between the label identifying information and the label location information.” Ex. 1003, 4:26–28. This passage does not support Petitioner’s assertion. The cited paragraph in the Declaration of Dr. Tentzeris provides: 81. In my opinion, a POSITA would understand that, without acquiring this second identifier in the sequence (which 14 Prior art patents enjoy a presumption of enablement. Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 450 (Fed. Cir. 2021). Wu is presumed to enable what it discloses. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”). However, even without applying this presumption, Wu provides a disclosure that establishes how to create the relationship between the label identifying information and the label location information of the added shelf label by extrapolation or interpolation without the reading device acquiring the label identifying information of the adjacent shelf label which is already installed. See Ex. 1003, 3:59–4:28. is explicitly shown in FIG. 3B of Wu), the reading device could not possibly “create[] the relationship between the label identifying information and the label location information[,]” by extrapolating from the ESL that is already installed as required by steps S104 and S106. Ex. 1003, [4:26-28]. Ex. 1009 ¶ 81. Dr. Tentzeris does not support his opinion with any explanation, reasoning, facts or data, here or elsewhere. This unsupported, conclusory testimony is entitled to little or no weight. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1378 (Fed. Cir. 2021) (“We do not accord weight to conclusory expert testimony.”); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). There is no evidence that supports Petitioner’s assertion that a skilled artisan would understand from Wu that the reading device acquires the label identifying information of a second shelf label that is already installed and adjacent to the added shelf label.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person having ordinary skill in the art relating to the subject matter of the ’709 Patent as of the Critical Date (“POSITA”) would have had at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s degree, or higher degree). Pet. 6 (citing Ex. 1009 ¶ 31). Petitioner further contends, in the alternative, that “a POSITA would have had a Bachelor’s Degree (or higher degree)” in one of the fields noted above, with “two or more cannot demonstrate unpatentability of any claim of the ’709 Patent because Petitioners fail to identify a ‘reading device’ that acquires and transmits the ‘sequence of label identifiers’ recited by the claims.”). Our decision is based on our determination that Petitioner has failed to establish that the cited art teaches or suggests acquiring and transmitting a sequence of label identifiers as recited in the independent claims of the ’709 patent. years of work experience” in one of those fields. Id. According to Petitioner, “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art. PO Resp. 16. Determining the level of ordinary skill in the art involves various factors, 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) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’709 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. In the claim construction section of its Response, Patent Owner discusses the claim terms “location(s)” and “planogram.” See PO Resp. 16– 29. As discussed in our analysis below, we determine that Petitioner has failed to show that the prior art teaches or suggests certain limitations of the claims that do not include either the term “location(s)” or “planogram.” Accordingly, no need exists to 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) (“[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))). Our decision relies on the plain and ordinary meaning of the limitations on which our decision is based and no need exists to expressly construe any claim term to make our decision.8” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the entire record of this proceeding, we find that Wu does not teach or suggest: (1) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 1: (2) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 1: (3) “acquiring, by a reading device, a sequence of label identifiers . . . comprising a label identifier of an adjacent shelf label which is adjacent to the added shelf label” as recited in independent claim 10; (4) “transmitting, by the reading device, the sequence of label identifiers to the computer system” as recited in independent claim 10: (5) “the computer system being configured to receive, from the reading” slip op. at 37
Patent outcomesUS 11,010,709 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,010,709 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Oct 2, 2023 · IPR2022-00794 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1, 2, and 6–8 were not shown unpatentable because the prior art combinations did not establish the claimed messaging through the server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“Tr. 78:6–10. Patent Owner responded “I don’t think it makes any difference for this panel’s determination.” Tr. 78:13–14. We agree and determine that the differences in the level of skill offered by the parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems.” See Inst. Dec. 10. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ289 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. media player Patent Owner contends that, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’289 patent refers to application software and does not encompass hardware devices.” PO Resp. 14 (citing Ex. 2022 ¶¶ 92–93). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player.’” Pet. Reply 1. Rather, Petitioner states the media players relied upon in the Petition are all application software. Pet. Reply 1–2. Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 24–27)—are application software. The third ‘media player’ is likewise not a hardware device.” Pet. Reply 2 (alteration in original). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 11
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Muthukumarasamy “controls delivery of selected media content and selects and controls the media devices that deliver the selected media content according to a media type of the selected media content.” Because Muthukumarasamy teaches that the media device displays media content from various disparate sources depending on the media type and media source, a [person of ordinary skill in the art] would have understood the media device loads an appropriate media player depending on the media type and source. Pet. 23–24 (citing Ex. 1008 ¶ 47; Ex. 1005 ¶¶ 66–67). Petitioner, however, proffers insufficient evidence or argument that the content choices described in paragraph 47 of Muthukumarasamy would have led an ordinarily skilled artisan to understand a media player is obtained and loaded in the content presentation device. Rather, Dr. Bederson makes conclusory statements without providing evidence to support the assertions (Ex. 1005 ¶¶ 66–67).” slip op. at 33
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Muthukumarasamy discussed above. In particular, Petitioner has not explained how Hayward teaches receiving the one or more messages in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing content from the file,” and “identify a location of the particular media player.” Pet. 41–45. More specifically, Petitioner contends that a person of ordinary skill in the art “would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate control of internet content presented at the content presentation device using any number of media players through embedded media player pages, as described in Hayward.” Pet. 65. However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the content presentation device” (Pet. Reply 22), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required messages being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above. Accordingly, Petitioner has not shown that the combination of Muthukumarasamy and Hayward teaches “receiving, in a server system, one or more messages from a personal computing device . . . wherein the one or more messages, . . . identify a particular media player for playing content from the file wherein the media player is a computer application operable to present content and control presentation of the content,” as recited in claim 1 and commensurately recited in independent claim 6. Additionally, because claim 2 depends from claim 1 and claims 7 and 8 depend from claim 6, we conclude that Petitioner has not established by a preponderance of evidence that the subject matter of claims 2, 7, and 8 would have been obvious over the combination of Muthukumarasamy and Hayward.” slip op. at 37
Patent outcomesUS 8,904,289 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,904,289 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00795 · APJ Debra K Stephens · IPR · Final written decision
Claims 1, 2, and 5–9 were not shown unpatentable over Muthukumarasamy alone or with Hayward because the claimed signals identifying a media player were not shown to pass through the asserted server system.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ251 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” 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. Media player Patent Owner contends, based on the “intrinsic record . . . an ordinary artisan would have understood the ordinary and customary meaning of ‘media player’ in the ’251 Patent refers to application software and does not encompass hardware devices” (PO Resp. 13 (citing Ex. 2022 ¶¶ 81–92, 95)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 23–26)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (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 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We determine that Hayward does not cure the deficiencies of Muthukumarasamy discussed supra. In particular, Petitioner has not explained how Hayward teaches receiving the one or more signals in a system server. Rather, Petitioner relies on Hayward to teach “identify a particular media player for playing the video content” (Pet. 38–41). More specifically, Petitioner contends “a [person of ordinary skill in the art] would have been motivated by and found it obvious from Hayward to implement the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device using any number of media players through embedded media player pages, as described in Hayward” (Pet. 15, 40 (citing Ex. 1005 ¶¶ 60, 102)). However, to the extent Petitioner’s assertions rely on “implement[ing] the DBCS (e.g., the RCIBS) to facilitate presentation of internet content at the display device . . .” (Pet. Reply 22 (emphasis omitted)), we determine Petitioner has not shown the combined process of Muthukumarasamy and Hayward would include the required signals being received by the server (e.g., zHub/zNode), as opposed to directly by the RCIBS as discussed above. Additionally, Petitioner has not shown, for the zHub/zNode process, that Hayward cures the deficiencies of Muthukumarasamy as set forth above.” slip op. at 39
Patent outcomesUS 8,356,251 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,356,251 - Google LLC v. Touchstream Technologies, Inc.No claims unpatentablePTAB · Sep 27, 2023 · IPR2022-00793 · APJ Debra K Stephens · IPR · Final written decision
Claims 1–5, 8, 11, 12, 14, 15, 27, and 28 were not shown unpatentable as obvious over Muthukumarasamy alone or with Hayward.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“(Tr. 78:6–10). Patent Owner responded: “I don’t think it makes any difference for this panel’s determination” (Tr. 78:13–14). We agree and determine that the differences in the level of skill offered by the Parties are not so significant as to warrant any changes to the definition set forth in the Decision to Institute. Therefore, we maintain our determination that an ordinarily skilled artisan would have had “a bachelor’s degree in electrical engineering or computer science (or equivalent experience) and two years of experience designing or implementing interactive systems with networked media or media playback systems” (see Inst. Dec. 10). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ528 Patent and the prior art of record (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art)).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“‘media player’ in the ’528 patent refers to application software and does not encompass hardware devices” (PO Resp. 16 (citing Ex. 2022 ¶¶ 83–91, 94)). Petitioner asserts that it “has not alleged any hardware device is a ‘media player’” and thus, “the Board need not resolve whether ‘hardware devices’ are encompassed by ‘media player’” (Pet. Reply 1). Rather, Petitioner states the media players relied upon in the Petition are all application software (Pet. Reply 1–2). Petitioner specifically states, “Petitioner has identified three ‘media players’ in the prior art. Two of these—Muthukumarasamy’s ‘Video Player[s]’ and Hayward’s ‘media players’ (Petition, 21–24)—are application software. The third ‘media player’ is likewise not a hardware device” (Pet. Reply 1–2). Thus, the parties agree that the term “media player” refers to software and not to a hardware device, and we apply this interpretation in our patentability analysis.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Additional Terms In light of the record and our findings, reasonings, and conclusions discussed below, we determine that no other terms or phrases in the claims require express construction (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
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded. Even if the zHub and the zNode would be used to control the volume on the TV on which the streamed content is displayed, this device cooperation does not show the particular messaging recited in the claim. More specifically, even under Petitioner’s scenario that the “Volume Up” command flows from the IED (“personal computing device”) through the zHub/zNode (“server system”) to the TV (“content presentation device”), this command does not “identify a particular media player for playing content from the file.” Petitioner has not shown any messages in Muthukumarasamy that “identify a particular media player for playing content from the file” and flow from the IED through the zHub/zNode to the content presentation device. Thus, Petitioner’s assertions about devices working together fall short of proving by preponderant evidence that Muthukumarasamy discloses the particular messaging contents and path recited in claim 1.” slip op. at 30
Patent outcomesUS 8,782,528 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,782,528 - Platinum Optics Technology Inc. v. Viavi Solutions Inc.No claims unpatentablePTAB · Oct 3, 2022 · IPR2021-00631 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–3, 5–8, 10–12, 14, 16–21, and 23 were not shown unpatentable because the asserted combinations did not establish the claimed hydrogenated silicon properties.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by Mr. Willey’s testimony, Petitioner proposes that a person of ordinary skill in the art would have had “a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with at least 5 years of experience in optical coating design and the manufacturing of optical filters, including various deposition techniques.” Pet. 13 (citing Ex. 1002 ¶¶ 66–68). According to Petitioner, “[a]dditional education (e.g., a Master’s degree with exposure to coating design and manufacturing) may substitute for some industrial experience in optical thin film design, and more industrial experience can substitute for a different educational background. Id. (citing Ex. 1002 ¶ 66). Patent Owner neither directly addresses Petitioner’s proposal nor provides its own proposal. See Tr. 35:15–18 (Patent Owner confirming for the record that it has not proposed a different level of ordinary skill than Petitioner’s proposal). Petitioner’s proposal is reasonable and consistent with the prior art presented. 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). We accordingly adopt Petitioner’s proposal.” slip op. at 11
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Based on the statements Dr. Clemens made under oath in his Declaration, we find that he qualifies as a person having at least ordinary skill in the art according to our adopted definition. The questions Petitioner raises about Dr. Clemens’s qualifications were insufficiently explored on cross-examination to impeach that testimony. With respect to Petitioner’s further complaint that Dr. Clemens “did not review all the evidence in rendering his opinions, did not select the materials he reviewed, and did no independent research on the question of enablement,” we agree with Patent Owner that Petitioner cites no authority for the propositions that expert witnesses must review all exhibits or perform independent research. Sur-reply 27. Indeed, we do not find it particularly unusual for an expert witness to focus his analysis and opinions on specific issues identified by counsel, and Dr. Clemens properly discloses the underlying facts and data upon which his opinions are based. See 37 C.F.R. § 42.65(a). We thus accord due weight to Dr. Clemens’s testimony.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “the claims do not need an express construction to resolve the issues presented in this proceeding” but nevertheless “provides its proposed interpretations of two terms [namely, ‘center wavelength’ and ‘passband’] to clarify how Petitioner is applying the prior art to the claims.” Pet. 13. Patent Owner does not directly address Petitioner’s proposed constructions for these terms, and appears generally to treat the terms in a manner consistent with Petitioner’s proposals. We conclude that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[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))).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“One difficulty with Petitioner’s position is that it treats the refractive index and extinction coefficient as independent variables in its argument. But the prior art is clear that the adjusting the hydrogen content of Si:H to achieve a desired extinction coefficient necessarily affects the refractive index—and, as we discuss above, that such adjustments do so in a direction counterproductive to the combination of parameters the inventors sought. And we agree with Patent Owner that the refractive index and extinction coefficient “are not parameters subject to simple adjustment, but properties resulting from the parameters of the fabrication process.” PO Resp. 52 (citing Ex. 2001 ¶¶ 121–122; Ex. 1016, Figs. 2–3). At the Oral Hearing, Petitioner conceded that Patent Owner’s characterization is accurate when considering the hydrogenated silicon material. See Tr. 65:7– 12. When Petitioner refers to the refractive index and extinction coefficient as result-effective variables, Petitioner means that those parameters are variables that can affect the properties of the claimed optical filter. See id. at 64:6–65:12. As we note above, Petitioner’s argument thus presumes that the refractive index and extinction coefficient can be independently adjusted to achieve desired filter properties—but the asserted prior art teaches against such independence because the known method of adjusting the hydrogen content of Si:H not only affects both the refractive index and extinction coefficient, but does so in a manner counterproductive to the inventors’ objective.” slip op. at 35
Patent outcomesUS 9,354,369 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,354,369 - DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentablePTAB · Feb 8, 2022 · IPR2020-01276 · APJ John A Hudalla · IPR · Final written decision
The Board held claims 1–3, 5–7, 13–15, 18, 20, 21, 24, 25, 27, and 29 not unpatentable over either asserted obviousness combination.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“After institution, neither party put forth arguments related to the level of ordinary skill. We discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Thus, a person of ordinary skill in the art would have had either (1) a Bachelor of Science in Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing protocols and/or equipment for streaming multimedia data; or (2) a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing protocols and/or equipment for streaming multimedia data. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’796 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“independent claims 1, 15, 20, and 27 are limiting. Dec. on Inst. 10–11. Petitioner does not take an express position on whether the preambles of the challenged claims are limiting. See Pet. 21 (stating that Geagan teaches the preamble “to the extent it is limiting”). Patent Owner supports our preliminary determination that the preambles are limiting. PO Resp. 37–41. Given this posture, we discern no reason to change our initial determination that the preambles are limiting. Thus, even though the disposition of this case does not turn on any particular limitation in the preamble, we maintain our determination that the preambles of claims 1, 15, 20, and 27 are limiting to the extent they color our analysis of Petitioner’s rationale for combining various prior art references.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no terms require explicit construction.2 See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[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))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner attempts to decouple these central control aspects from the functionality of sliding windows. In particular, Petitioner argues that “[t]he majority of the functionality for implementing the sliding window buffers is found in Vishlitzky’s stream servers themselves” and that Patent Owner has not established “that the controller servers of Vishlitzky exercise control over the playout history, the buffers, or sliding window functionality of Vishlitzky’s stream servers.” Pet. Reply 8–9. Yet Petitioner expressly relies on Vishlitzky’s admission control program, which runs on controller servers 28, 29, to teach the “determining” step of claim 1. Pet. 35–36, 40–41; Pet. Reply 21–22. Petitioner has not explained how the admission control program’s centralized function of choosing an appropriate stream server to service a request (see Ex. 1010, 7:62–8:3) would be implemented in the stream servers themselves. In addition, Petitioner’s analogy between Vishlitzky’s controller servers and the memory controllers used with Geagan’s proxy (Pet. 63; Pet. Reply 9) does not detail how and whether Petitioner proposes to modify Vishlitzky’s centralized controller functions such that they might be compatible with “the distributed nature of Geagan’s proxy approach,” as Petitioner characterizes it. Pet. Reply 10. At the oral hearing, Petitioner also suggested that a controller within a single proxy from Geagan could allocate incoming requests to multiple of Vishlitzky’s stream servers within that same proxy. Tr. 55:1–57:21; see also PO Sur-reply 23–24 (discussing this potential argument). In other words, Petitioner seemed to suggest that multiple stream servers from Vishlitzky’s stream server architecture in Figure 16, along with controller servers from Figure 2, could be replicated in each of Geagan’s proxies. Yet Petitioner disavows such a mapping in its Reply: “[T]he Petition does not propose that a POSITA would have bodily incorporated the entirety of Vishlitzky’s hardware control structure when implementing Geagan’s system using Vishlitzky’s ‘sliding window’ to store cached streaming content.” Pet. Reply 6. Nor was this the combination described in the Petition. Instead, Petitioner proposed “to implement the buffer of Geagan as a ‘pre-configured playout history (PH) buffer’ . . . because Vishlitzky teaches that it is advantageous to pre-configure a playout buffer.” Pet. 34; see also id. at 62–63 (“[A] POSITA would have had a reasonable expectation of success in implementing details of the ATM-based stream server of Vishlitzky in Geagan’s proxy . . . .”). Petitioner further characterizes this as “[t]he buffer of Geagan’s proxy, as implemented as a pre-configured PH buffer per Vishlitzky.” Pet. 39. And, importantly, Petitioner cites the creation of another proxy device in Geagan for teaching the recited “non pre-configured PH buffer”: “Geagan in view of Vishlitzky discloses ‘servicing the first request from a non pre-configured PH buffer,’ such as by live-streaming content using a buffer at the proxy device that is created at the time of the request for an unpopular live stream.” Pet. 42 (emphasis added). Finally, even if Petitioner’s papers had proposed a combination where Vishlitzky’s entire stream server and controller architecture is incorporated in each of Geagan’s proxies, Petitioner has failed to articulate reasons with some rational underpinning why an ordinarily skilled artisan would have made this combination. Thus, we are not persuaded by Petitioner’s arguments. At the very least, Petitioner has not explained where Vishlitzky’s controller servers would be disposed in the combined system and how they” slip op. at 28
Patent outcomesUS 6,757,796 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,757,796 - DISH Network L.L.C. / DISH Technologies L.L.C. et al. v. Sound View Innovations, LLCNo claims unpatentablePTAB · Jan 18, 2022 · IPR2020-01041 · APJ Debra K Stephens · IPR · Final written decision
DISH failed to prove claim 13 unpatentable as obvious over either Durand and Bennett or Goyal and Bennett.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s formulation of the level of skill as consistent with the prior art before us (see Okajima 261 F.3d 1355). Based on the present record, including the disclosure in the ’456 Patent, we apply Petitioner’s definition of the level of ordinary skill in the art. We determine Petitioner’s asserted level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ’456 Patent and the prior art of record (cf. Okajima, 261 F.3d at 1355 (the prior art itself may reflect an appropriate level of skill in the art)). As we determine the four instances of “at least” in Petitioner’s formulation introduce ambiguity, we remove these terms from our definition. Accordingly, we determine an ordinarily skilled artisan would have a Bachelor of Science in one of Electrical Engineering, Computer Engineering, Computer Science, or a related field, as well as three to four years of experience in implementing resource reservations for UNIX-based computing systems, or a Master’s degree in Electrical Engineering, or an equivalent field, as well as two years of experience in implementing resource reservations for UNIX-based computing systems.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to provide an express interpretation of any terms of claim 13 (Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only terms that are in controversy need to be construed, and 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) (applying Vivid Techs. in the context of an inter partes review)).” slip op. at 9
- BurdenNot shown unpatentable
“However, Petitioner has not set forth with specificity where Bennett teaches the request uses the one or more object references. Indeed, Petitioner has not explained how these two teachings of Bennett disclose the recited limitations with sufficient specificity or how one of ordinary skill in the art would modify Durand with these teachings of Bennett to achieve the recited limitations. Accordingly, Petitioner has not established that the combination of Durand and Bennet teaches the subject matter of claim 13. Therefore, based on the entire trial record, we determine Petitioner has not established by a preponderance of the evidence that the subject matter of claim 13 would have been obvious over Durand and Bennet under 35 U.S.C. § 103.” slip op. at 19
- Strike new argumentNew argument disregardedDecided for patent owner
“In its Reply, as noted by Patent Owner (PO Sur-reply 11), Petitioner offers a new theory, pointing to a different system call of Goyal (Pet. Reply 19–20 (citing Ex. 1090 ¶ 144 (citing Ex. 1002 ¶ 352–354))). Petitioner contends this new argument is to address Patent Owner’s alleged contention that “‘quality of service’ must already be ‘provided’ at the same time when the correspondence to the ‘reference to an object’ is created (Pet. Reply 19 (citing Ex. 1090 ¶ 141)). Thus, in Dr. Negus’ Reply Declaration, Dr. Negus asserts Goyal teaches the recited “quality of service guarantees that correspond to a reference to an object” relying on the “int hsfq_move (int from, int to, .....)” which “is used to move a thread from one leaf node to another”1 (Ex. 1090 ¶ 144). Petitioner’s alleged reliance on the hsfq_move (int from, int to, …….) system call instead of the int hsfq_mknod (char *name, int parent, int weight, int flag, scheduler_id side) system call represents a change in Petitioner’s unpatentability contentions that is presented for the first time in Petitioner’s Reply (see Pet. Reply 19–20). We acknowledge that the Petition mentions a “move” function: “Additionally, system calls are used to remove, move, and administer nodes in the scheduling structure. Goyal also discloses several additional functions to manage the scheduling structure, including removing, moving, and administering nodes.” (Pet. 61 (citing Ex. 1002 ¶¶ 350–352 (citing Ex. 1007 § 4))). But the cited portion of Dr. Negus’ Declaration simply states that there are other system calls, including “int hsfq_parse(char *name, int hint),” “int hsfq_rmnod(int id, int 1 We note Dr. Negus refers to the system call as “int hsfq_move” (see e.g., Ex. 1002 ¶¶ 144, 352) although Goyal discloses the system call as “hsfq_move” (Ex. 1007 § 4). We consider Dr. Negus’ naming to refer to the same system call as disclosed in Goyal. mode),” and “int hsfq_admin(int node, int cmd, void *args)” and the system call “‘int hsfq_move(int from, int to, .....)’ which ‘is used to move a thread from one leaf node to another’” (Ex. 1002 ¶ 352; see also id. ¶ 144 (repeating the same information as paragraph 352)). Additionally, these teachings of Goyal are discussed in conjunction with the limitation “utilizing an application programming interface . . . to establish one or more quality of service guarantees” (id. ¶¶ 356, 359). Thus, Dr. Negus’ initial Declaration does not elaborate on the move function, and the Petition does not rely on the “hsfq_move” system call to teach the limitations of claim 13. Petitioner asserts that this argument in reply is to address “Patent Owner’s new claim construction position” (Pet. Reply 19). We disagree. As outlined above, the Petition does not identify where an object reference is “used in the request,” as specifically recited in claim 13. Petitioner’s new reply argument, therefore, attempts to fill in a gap in Petitioner’s unpatentability contentions from the Petition that was pointed out by Patent Owner. Under the circumstances here, we do not consider this a permissible reply argument (see Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/sites/ default/files/documents/tpgnov.pdf (“Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.”)). Thus, we do not consider Petitioner’s newly presented contentions.” slip op. at 26
Patent outcomesUS 6,725,456 not shown unpatentableClaim constructioncites Phillips · KSR · GrahamPatents in suitUS 6,725,456 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 15, 2016 · IPR2014-01348 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 40, 41, 43, 44, 46–59, 61–64, 66–74, 86, 87, 89, and 90 not unpatentable because it excluded Goldbeck for lack of authentication.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1105 to be. In that regard, the only identifying information provided by TRW is a footnote in its Petition. See Pet. 2 n.4. The footnote offers a purported bibliographic reference for Exhibit 1105 as follows: “Goldbeck et al., ‘Lane 5 detection and tracking by video sensors,’ Intelligent Transportation Systems, 1999. Proc., 5-8 Oct. 1999, pp.74-79.; prior art under 35 U.S.C. § 102(b).” Id. Thus, TRW claimed that Exhibit 1105 was published during October 5–8 of 1999 in something called Intelligent Transportation Systems. Id. TRW did not cite or otherwise provide any evidence for this claim. Id.8” slip op. at 5
- BurdenNot shown unpatentable
“In its Petition, TRW offered Exhibit 1105 as an article published October 5– 8, 1999, in Intelligent Transportation Systems. Pet. 2 n.4. Magna timely objected for, among other things, lack of authentication. TRW did not serve any supplemental evidence that Exhibit 1105 is what TRW claims it is. And, in opposing the Motion to Exclude, TRW has not directed us to evidence probative of Exhibit 1105 being an article published October 5–8, 1999, in Intelligent Transportation Systems or persuaded us that Exhibit 1105 is self-authenticating for that which TRW generally claims it to be: “an IEEE publication from an IEEE periodical.” Opp. 4. Magna’s Motion to Exclude Exhibit 1105 for lack of authentication is granted. III. CONCLUSION Petitioner’s ground of unpatentability relies on Exhibit 1105 (Goldbeck). Because we exclude Exhibit 1105 from evidence, Petitioner’s ground of unpatentability necessarily fails.” slip op. at 12
Patent outcomesUS 8,508,593 not shown unpatentableNonePatents in suitUS 8,508,593 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 6, 2016 · IPR2014-01347 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 1–3, 6–12, 16, 18–31, 33–39, 76–80, and 82–85 not unpatentable because it excluded Goldbeck for lack of authentication, defeating both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1005 to be.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Magna challenged the sufficiency of TRW’s evidence that Exhibit 1005 constitutes a prior art printed publication. See PO Resp. 48–50; see also 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.”). TRW responded to Magna’s sufficiency of the evidence arguments by” slip op. at 4
Patent outcomesUS 8,508,593 not shown unpatentable§ 102 anticipationPatents in suitUS 8,508,593
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.