• Axon Enterprise, Inc. / Dedrone Holdings, Inc. et al. v. Airspace Defense, Inc.Some claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00629 · APJ Scott C Moore · IPR · Final written decision

  Original claim 12 is not unpatentable; substitute claim 37 is added, while substitute claims 21–28 and 30–36 are denied as obvious.

  RulingsFinal written decision

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

    “F.3d at 1279–80, we begin our analysis with the Specification of the ’711 Patent. The Specification indicates when a UAV (such as the recited “reference aerial vehicle”) navigates autonomously, it flies without manual control, and can, for example, track and fly to a target using information captured onboard the vehicle itself. See Ex. 1001, 3:24–28 (“[I]t may not be desirable to manually control the interceptor aerial vehicle to follow the target UAV. In some embodiments, the interceptor aerial vehicle is able to autonomously track and fly to the target UAV using machine vision based on images captured by a camera of the interceptor aerial vehicle.”). The Specification also indicates that “autonomous” means more than just “automatic flight,” and clarifies that autonomous navigation occurs when a UAV that previously received a target location from an external source subsequently turns and flies itself towards the received location. See, e.g., id. at 4:15–17 (disclosing that the detected location of a target may be provided to an interceptor “to allow it to automatically and autonomously fly toward the direction of the detected location”); 15:64–16:3 (automatic and autonomous navigation occurs when an interceptor’s navigation component and/or flight controller receive the location of a target, and adjust the interceptor “to turn and fly towards the received location . . . based on the received location”); 16:49–60 (“For example, a flight direction and/or speed of an interceptor aerial vehicle are automatically and autonomously adjusted based on a location and size of the target within the captured image. . . . This allows the flight path of the interceptor aerial vehicle to be dynamically adjusted to track and follow a moving target.”).” slip op. at 11

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

    “have had reason to combine Beard and Laufer in the manner proposed by Petitioner, the combination would not satisfy the Autonomous Navigation limitation required by claim 12 because Laufer’s autopilot commands are generated by and transmitted from a remote command center (i.e., Laufer’s central controller 115). PO Resp. 15–16. In its Reply, Petitioner does not dispute that Laufer’s autopilot commands are generated by Laufer’s central controller 115, which is remote from the aircraft being controlled. See Reply 13–17. Petitioner asserts, however, that the combination still satisfies the Autonomous Navigation limitation because these autopilot commands are generated without human input. See id. Based on the complete trial record, Patent Owner’s arguments are persuasive. See PO Resp. 15–16; PO Sur-reply 42, 1–6; Ex. 2025 ¶¶ 84–87. The flight of Beard’s UAV 100 under the control of Laufer’s autopilot commands does not satisfy the Autonomous Navigation limitation of claim 12, as we have construed that limitation, because Laufer’s autopilot commands are generated at a location that is remote from UAV 100 (Laufer’s central controller 115.) See, e.g., Ex. 1010 ¶ 40 (“Central controller 115 uses autopilot command module 440 to generate autopilot aircraft commands”), ¶¶ 26, 30 (clarifying that central controller 115 and the controlled interceptor aircraft are separate devices that may communicate through a “wireless connection”), Fig. 4 (depicting “aircraft control commands 475” being generated externally from the depicted “Interceptor Aircraft”); see also Ex. 2025 ¶¶ 95–95. Petitioner never disputes that, in the proposed combination, Laufer’s central controller 115 would remain external to Beard’s UAV 100. See Reply 13–17. Instead, Petitioner relies on its proposed construction of the Autonomous Navigation limitation, which would have encompassed such an arrangement. See id. Our construction of the Autonomous Navigation limitation, which did not adopt Petitioner’s claim construction position, is dispositive of Petitioner’s argument. We thus determine that Petitioner has not shown by a preponderance of the evidence that claim 12 would have been obvious over Beard and Laufer.” slip op. at 15

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “the legal requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4, 7–8. For the reasons that follow, we determine that Patent Owner has satisfied this burden. 1. Proposal of a Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see also 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, IPR2018-01129, Paper 15 at 4; see also 37 C.F.R. § 42.121(a)(3). Patent Owner has shown it proposes a reasonable number of substitute claims by proposing a single substitute claim for each of challenged claims 1–4, 8–11, and 13–20. MTA 1–2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 2. Amendments Respond to a Ground of Unpatentability “A motion to amend may be denied where … [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner has responded to the grounds of unpatentability involved in this proceeding by amending the claims in response to the Petition’s asserted prior art. See MTA 2, 25, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 3. No Enlargement of the Scope of the Claims An amendment may not seek to enlarge the scope of the claims of the patent. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(b)(1)–(b)(2). Patent Owner asserts that the amendments in the Motion do not enlarge the scope of the claims of the patent because each proposed substitute claim “retains all of the limitations of the corresponding challenged claim, and each proposed independent substitute claim adds further limitations.” See MTA 2, Claims App. Petitioner does not argue otherwise. See generally MTA Opp. We determine that Patent Owner meets this requirement. 4. No Introduction of New Matter An amendment may not introduce new matter. 35 U.S.C. § 316(d)(3);” slip op. at 22

  • 112 supportDecided for patent owner

    “Having considered the evidence and argument cited by both parties, we determine there is sufficient written description support for the disputed portions of limitations [37.e1], [37.e3,] and [37.e4]. The ’452 application discloses selecting between groups of processing schemes (e.g., algorithms) depending on a confidence level, where the groups are, for example: high cost, high robustness algorithms; medium cost, medium robustness algorithms; and low cost, low robustness algorithms. See Ex. 2019 ¶¶ 146–147. These schemes or algorithms may be neural networks. See, e.g., id. ¶ 50 (including neural network as a type of algorithm); see also id. ¶¶ 109–110); see generally MTA Opp 1 (not disputing that schemes may be neural networks). Specifically, the ’452 application describes “algorithms that process video frames of one or more video data streams,” and “produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Id. ¶ 141. The ’452 application also discloses the concept of switching between neural networks based on confidence levels. In particular, the ’452 application discloses that a “process cycles through the processing schemes to produce a detection of an object,” for example, where “if the confidence number is higher than an activation number, an action is performed to stop or change a running group (i) and select or switch to group (ii).” Id. ¶ 146. More particularly, “a processing scheme from the group of (i) High cost (low refresh rate), high robustness algorithm[s] can select a cheaper processing scheme from the group of (ii) Medium cost, medium robustness algorithms.” Id. The ’452 application additionally discloses that schemes or algorithms (e.g., neural networks) are applied to individual video frames, and that the confidence levels that determine which neural network will be applied in the future are also derived from individual video frames. For example, as discussed above, the ’452 application describes that “[t]he processing schemes produce a prediction of objects within the video f[r]ame, as well as a confidence number that is a measure of quality for that prediction.” Ex. 2019 ¶ 141 (emphases added). The ’452 application also describes selecting and applying an individual neural network, rather than only selecting and applying a group of processing schemes. For example, as highlighted above, the ’452 application describes that “a processing scheme from the” “High” group “can select a cheaper processing scheme from the” “Medium” group. Id. ¶ 146 (emphases added). In our view, these disclosures, read together, would reasonably convey to one skilled in the art that the inventor had possession of the disputed subject matter described above. See Ariad, 598 F.3d at 1351.” slip op. at 24

  Patent outcomesUS 10,514,711 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 10,514,711
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Oct 1, 2026 · IPR2023-00042 · APJ Scott Raevsky · IPR · Remand

  Claims 1–6, 11, and 20 are unpatentable as obvious over Doo and Amira; claims 12–19 were not shown unpatentable because the asserted tissue properties were not shown in Amira.

  RulingsRemand decision

  • RemandOther

    “Federal Circuit. The court issued its decision in Medivis, Inc. v. Novarad Corp., No. 2024-1794, 2026 WL 587294 (Fed. Cir. Mar. 3, 2026) (“Medivis”) (Paper 40),1 affirming-in-part, reversing-in-part, and remanding our Final Written Decision (Paper 35) for further proceedings. In its opinion, the Federal Circuit reversed our “determination of no motivation to combine Doo and Amira” and remanded for further proceedings to evaluate whether claims 1–6 and 11–20 (“the Remanded Claims”) of U.S. Patent No. 11,004,271 B2 (“the ’271 patent,” Ex. 1001) are unpatentable in view of Petitioner’s obviousness challenge over Doo and Amira. Medivis, slip op. at 9–10. We have jurisdiction under 35 U.S.C. § 6(b). We issue this Final Written Decision on Remand pursuant to 35 U.S.C. §§ 144, 318 and 37 C.F.R. § 42.73 in an inter partes review involving Medivis, Inc. (“Petitioner”) and Novarad Corp. (“Patent Owner”). For the reasons discussed below, after considering the entirety of the record in light of the Federal Circuit’s directives in Medivis, we hold that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1–6, 11, and 20 are unpatentable; however, Petitioner has not demonstrated, by a preponderance of the evidence, that claims 12–19 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of skill, except that we excise part of Petitioner’s definition to produce the following modified version: 4 Throughout this decision, we eliminate the parties’ italicization of reference names from quotations without noting “emphasis omitted.” 5 Doo, WO 2015/164402 A1, published October 29, 2015 (Ex. 1008). 6 Excerpt of Amira 5 User’s Guide, title through Chapter 2 (Visual Imaging 2009) (Ex. 1005). engineering, or a related field with several years of experience in the design, development, and study of augmented reality devices and . . . familiarity with conventional medical imaging data and visualization of data for medical procedures . . . . Our edit removes the alternative of “working with a team including someone with such familiarity” because one’s role in a team may be tangential to their personal experience with medical imaging. Regardless, had we adopted Petitioner’s original definition, our decision would not have changed.” slip op. at 6

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

    “We agree with Petitioner that the term “3D slices” has no apparent connection to the phrase “direct volume rendering.” Patent Owner’s argument appears to be that DVR “requires an image of the entire anatomical volume that is neither feature-specific nor segmented, [which] would seemingly require that all inner layers be displayed.” Reply 4; see Sur-reply 6–10 (not disputing Petitioner’s characterization). But, as Petitioner notes, the specification directly undermines this by teaching “display [of] a slice of the 3D data instead of a volume of the 3D data.” See Reply 4 n.2 (quoting Ex. 1001, 5:34–35). In other words, to the extent DVR would depict an image of the entire anatomical volume, displaying 3D slices “instead of a volume of the 3D data” implies the opposite of DVR. Even if “3D slices” somehow implied DVR, Patent Owner’s position is still untenable. Claim 1 does not recite “3D slices.” Instead, claim 1 recites “3D data” and “inner layers.” Ex. 1001, 18:54–65. Patent Owner fails to clarify the relationship between “slices,” “3D data,” and “layers,” and its expert even admits that slices and layers are two different things. See PO Resp. 13; Ex. 1022, 32:7–16 (agreeing that the words “slice” and “layer” are not “synonyms”), cited in Reply 4. We also agree with Petitioner that dependent claim 3 distinguishes slices and layers by reciting “slices of the projected inner layer.” Reply 4 (quoting Ex. 1001, 19:3–10). Thus, even if 3D slices somehow implied DVR, the language of claim 1 does not support limiting the claim this way.” slip op. at 12

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “The determination of whether a document was publicly accessible “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018). For instance, courts routinely rely on the Wayback Machine to determine when a reference was first made available to the public. Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021) (“District courts have taken judicial notice of the contents of webpages available through the Wayback Machine ‘as facts that can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.’”). We disagree with Patent Owner’s argument that “Medivis cannot rely on additional prior art”—Exhibits 1023 and 1024—“that was submitted after its Petition to carry its burden without leave from the Board.” Sur-reply 4. As Patent Owner did not file a motion to exclude these exhibits, we decline Patent Owner’s invitation to disregard them. We also find Petitioner’s Reply argument proper because it directly responds to Patent Owner’s contention that Petitioner did not prove the public accessibility of Amira. See Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F.3d, 919, 925 on issues previously raised.”). Petitioner’s Reply argument appropriately elaborates on the Petition’s contention that Amira was publicly accessible. Patent Owner also does not dispute the substance of Petitioner’s evidence. For example, Patent Owner does not address the substance of Mr. Frank-White’s declaration. We find that this evidence, including Mr. Frank- White’s declaration testimony, persuasively supports the public availability of Amira as of the date shown in the Wayback Machine URL. See Ex. 1024.” slip op. at 22

  Patent outcomesUS 11,004,271 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 11,004,271
• Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentable
  PTAB · Feb 6, 2026 · IPR2024-01340 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–12 and 14–18 are unpatentable as obvious over Whitehead, alone or with Marcus ’904; claims 13 and 19–24 were not shown unpatentable.

  RulingsFinal written decision

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

    “establishes that the subject matter of independent claim 19 would have been obvious in view of Whitehead. Claim 19 recites “an aggregator having a memory and a processor, the processor adapted for . . . providing an output signal including data indicative of the selection and of user data.” Ex. 1001, 15:51–16:3. As discussed above (Section II.C.2), we construe claim 19 as requiring a signal including both “data indicative of the selection and of user data.” Accordingly, we consider whether Petitioner has shown that Whitehead teaches or suggests that the “aggregator” “provid[e] an output signal including” both “data indicative of the selection and of user data.”” slip op. at 46

  • Expert testimonyOther

    “Cristofalo’s “user identifiers” represent data about users that Cristofalo’s system uses to “select a specific media object” (advertisements) from received “multi-object programming data.” Cristofalo at ¶ [0048]. For example, a user identifier may indicate that a given user is a Coca-Cola drinker, and when the receiving system receives the multi-object programming data it can select a particular media object out of several possible media objects (e.g., a Pepsi advertisement) to push to the user. Id. This user data exists independently of, and does not relate to, any particular media stream or streams. See Goodrich PO Resp. Decl. at ¶ 135. Petitioner seems to recognize this when tersely referring to “user identifiers” as “data,” not “data relating to a plurality of streams.” Pet. at 71. Accordingly, Cristofalo’s “user identifiers” are not the claimed “data related to the plurality of media streams.” Goodrich PO Resp. Decl. at ¶ 136.” slip op. at 73

  Patent outcomesUS 8,145,704 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 8,145,704
• Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentable
  PTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. 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 Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 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.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39

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

    “Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48

  Patent outcomesUS 8,886,753 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,886,753
• Alivecor, Inc. v. Apple Inc.Some claims unpatentable
  PTAB · Jan 7, 2025 · IPR2023-00949 · APJ Scott A Daniels · IPR · Final written decision

  Claims 11–14 and 16–20 are unpatentable over Kim; claim 15 was not shown unpatentable over Chang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s asserted level of ordinary skill in the art is essentially the same as Petitioner’s, for example requiring a bachelor’s degree in science or engineering and “at least two years of relevant work experience with capture and processing of data or information, including but not limited to physiological information.” Id.; Pet. 9. In view of the similarity, our record now before us, and as we did in our Institution Decision, we rely on Petitioner’s proposed level of ordinary skill in the art as it is essentially the same as that proposed by Patent Owner. Petitioner’s asserted level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’619 patent and the asserted prior art references. Okajima, 261 F.3d at 1355.” slip op. at 10

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

    “C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, “we need only construe terms ‘that are in controversy, 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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither Patent Owner nor Petitioner indicate that any claim terms require construction. See generally Petition; PO Resp. For purposes of this Decision where no claim terms are in dispute, we need not explicitly construe any claim terms.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “What these cases and examples clearly articulate, is that whether there is sufficient description in an anticipation reference for linking different disclosures, elements, and embodiments, is particularly case and fact dependent. Moreover, a finding of anticipation resting upon a reference’s disclosures of elements in different embodiments turns on whether an ordinarily skilled artisan would understand that the reference suggests arranging the elements of the embodiments to one another in the same way as the challenged claims. For the reasons that follow, we determine that there is sufficient description and teaching in Kim such that the “combined button” disclosed by Kim, for example in Figure 10(b), can be the same “combined button” as discussed in the embodiment of Figure 18.” slip op. at 28

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

    “As to Patent Owner’s first and second arguments, as we discussed in detail above with respect to anticipation, we find that there is sufficient evidence in Kim itself of contextual and even express links between the various combined button embodiments and Figure 18. Section II.D.2.b)(1)– (4). We have already determined “that one of ordinary skill in the art would understand Kim to disclose the ‘combined button’ structure and function that could be implemented on the face or sidewall of a device.” Id. We likewise determine, based on the same evidence, that a person of ordinary skill in the art would have understood Kim to suggest that the combined button structure and function, for example in the embodiment of Figure 10(b), could be implemented in an opening on the face or sidewall of a device. Obviousness does not require an instruction manual on how to physically incorporate or combine the disclosures of two embodiments in a reference. As KSR informs us, “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Moreover, in this case we have only one prior art patent, Kim, so at least the pieces of the puzzle are all in the same box. The persuasive testimony of Dr. Berger that “a person of ordinary skill in the art would have been familiar with electronic devices with sealed and/or insulated button assemblies, and would understand that those assemblies were not limited to the front face of a device,” is unrebutted in this case. Ex. 1003 ¶ 110. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given the background knowledge of a person of ordinary skill in the art in conjunction with the motivation and teachings in Kim itself for placing sufficient motivation to support the combination of Kim’s Figure 10(b) embodiment with the sidewall placement of the combined button taught in Figure 18 for obviousness purposes. It is well-settled that a single prior art obviousness reference itself can provide motivation for the combination. See General Elec. Co. v. Raytheon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020) (Reversing the Board’s finding of nonobviousness over a single prior art reference, the Court explained that “the Board’s approach would require a motivation to combine each element of the claim—even those present together in a reference. This analysis unduly dissects prior art references into collections of individual elements, requiring a party showing obviousness to re-do the work already done in the prior art reference.”). Patent Owner’s third argument is unavailing because although Dr. Anthony testifies that “implementing the fingerprint sensor assembly of Kim’s Figure 10 embodiment in the ‘lateral surface’ of Kim’s Figure 18 embodiment would have complicated the manufacturing process for the resulting mobile device,” Dr. Anthony does not provide testimony or evidence that implementing the combined button on the sidewall would have been difficult or beyond the level of ordinary skill in the art. Ex. 2009 ¶ 73. We credit Dr. Berger who explains persuasively that “[p]rior to the ’619 patent’s earliest alleged priority date of June 19, 2017, a person of ordinary skill in the art would have known that a mobile electronic device could include one or more button assemblies in a sidewall.” Ex. 1003 ¶ 47 (citing Ex. 1013, 4:40, 19:42–20:4, Figs. 13B, 17, 19A, 19B). It is well-settled that a person of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR, 550 U.S. at 418 (“the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”).” slip op. at 43

  Patent outcomesUS 10,866,619 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,866,619
• Alivecor, Inc. v. Apple Inc.Some claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

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

    “In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it 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). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33

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

    “Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32

  Patent outcomesUS 10,076,257 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,076,257
• Masimo Corporation v. Apple Inc.Some claims unpatentable
  PTAB · Sep 23, 2024 · IPR2023-00634 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–5, 9, 10, 14, 15, and 17–20 are unpatentable as obvious; claims 6–8, 11–13, and 16 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We discern no material difference between the parties’ definitions. Cf. PO Resp. 16 (Patent Owner stating that “[t]he analysis presented [in the Response] remains unchanged even if [Petitioner’s proposed] skill level is applied.”). 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). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

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

    “We find Patent Owner’s position to be persuasive. Not only are the cover and biosensor module recited separately in the list of components of the device of claim 9, we also agree that the “disposed over” claim language establishes the configuration of two separate components relative to each other. Additionally, the claim language that requires the cover to be “configured to pass optical signals to and from the biosensor module” supports an interpretation where the cover is separate from the biosensor module, otherwise it seemingly would be passing signals to and from itself. The understanding that the cover is separate from the biosensor module in claim 9 is consistent with the Specification’s description of an embodiment that tracks the language of claim 9 and speaks of the two elements as separate, individual components, namely the statement that “[a] biosensor module may be disposed within the opening of the housing” and “[a] rear cover may be disposed over the biosensor module.” Ex. 1001, 2:59–62; see also id. at 2:56 (the same paragraph beginning with “Some embodiments . . .”). Petitioner asserts that its proposed construction is consistent with the claim language, arguing that “the word ‘cover’ naturally suggests that its role is to be ‘disposed over,’” and that “[a] cover can be part of a module just as a clear plastic lid can be both disposed over, and part of, a container, allowing a view of its contents.” Pet. Reply 4. We disagree with Petitioner’s analogy. Although a clear lid may be over a jar, it cannot be said to be “disposed over” the container consisting of both the jar and the lid because it then would be disposed over itself.” slip op. at 14

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

    “Patent Owner argues that the proposed combination will result in a configuration “that is contrary to Honda’s teachings and its stated goals and purpose of achieving quick and efficient wireless charging.” PO Resp. 30– 31. Patent Owner’s focus on these properties is misplaced. We agree with Petitioner that characteristics such as charging speed and efficiency are not claimed. See Pet. Reply 1 (“[T]he ’783 patent does not disclose, let alone claim, sizing or other details [Patent Owner] Apple asserts are necessary for successful wireless charging.”); id. at 6 (“[C]harging speed [is] not claimed.”). Rather, the claim drafter utilized broad language to encompass a biosensor device having the capability to wireless charge through a cover— both good configurations and those that Patent Owner argues are inferior. And, even if the proposed combination does not yield a commercially viable product, as Patent Owner implies, the broad claim scope would hinder an innovating competitor’s ability to utilize and test that purported less desirable combination on the way to development of a better device. Patent Owner argues that a person of ordinary skill in the art would not have been motivated to make the proposed combination and would not have had a reasonable expectation of success in making that combination. See, e.g., PO Resp. 31. These arguments are not persuasive at least because Patent Owner’s motivation requirement and implied definition of success are not sufficiently tied to the claimed invention. See, e.g., Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1375 (Fed. Cir. 2023) (“Reasonable expectation of success refers to the likelihood of success in combining references to meet the limitations of the claimed invention.”). Patent Owner would require a successful outcome to be “quick and efficient wireless charging.” See PO Resp. 31. In making these arguments, Patent Owner is improperly superimposing the purported goals and purpose of Honda, the secondary reference, onto the ordinary artisan. See, e.g., id. at 37–41. However, the intended purpose of a prior art reference does not control the obviousness inquiry. Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Our reviewing court recently explained: The [motivation-to-combine] inquiry is not whether a relevant artisan would combine a first reference’s feature with a second reference’s feature to meet requirements of the first reference that are not requirements of the claims at issue. A contrary view would run counter to established principles, including that the claim defines the invention whose obviousness is being assessed and that a skilled artisan may be motivated to combine particular features of different references, e.g., to secure some benefits at the expense of others, even when bodily incorporation would be impossible or inadvisable. Axonics, Inc. v. Medtronic, Inc., 73 F.4th 950, 957 (Fed. Cir. 2023). Petitioner’s combination yields the benefit of the addition of wireless charging capability to a biosensor device. A person of ordinary skill in the art would find that benefit to be a motivating reason to make the combination. See, e.g., Ex. 1003 ¶ 121 (Dr. Duckworth’s motivation opinion based, in part, on “Kotanagi’s own statement that its rechargeable battery can be recharged ‘in a contactless state.’”); id. ¶ 127 (Dr. Duckworth’s describing a motivating factor in Honda’s explanation “that this [charging] station passes wireless power to the wireless charging receiving coil through a rear cover glass (similar to that of Kotanagi), using the physics of induced currents and magnetic flux.”); see also Ex. 1052, 45:16–46:2 (Dr. Anthony, on cross-examination and after being asked whether wireless charging is an improvement over wired charging for a consumer watch, responding that “in some instances it could be, and in others it may not be.”). And, as to a reasonable expectation of success, Patent Owner admits that “Petitioner has presented a device configuration in which a wireless charging coil could be provided in Kotanagi’s through hole 22.” PO Resp. 56; see also id. at 3 (Patent Owner arguing that “the size of coil that could be provided in this allegedly available space would be small and would significantly limit the amount of wireless power signal transmission,” but not arguing that even Patent Owner’s purported size-limited configuration would be inoperative); see, e.g., Ex. 1003 ¶¶ 130–133 (Dr. Duckworth credibly testifying that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Kotanagi and Honda).” slip op. at 31

  Patent outcomesUS 10,627,783 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,627,783
• Medivis, Inc. v. Novarad Corp.Some claims unpatentable
  PTAB · Apr 12, 2024 · IPR2023-00045 · APJ Scott Raevsky · IPR · Final written decision

  Claims 1–4, 6, and 7 are unpatentable over Jones and/or Doo; claim 5 was not shown unpatentable because the obviousness grounds lacked adequate motivation to combine.

  RulingsFinal written decision

  • Skill levelOther

    “A. Level of Ordinary Skill in the Art” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “2. “augmentation tag” Petitioner proposes the following construction for “augmentation tag”” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Accordingly, Petitioner persuades us that Jones discloses limitation” slip op. at 31

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

    “reasoning why the POSITA would be motivated to combine, ‘what was known in the art at the relevant time,’ whatever that may be.” PO Resp. 42. We agree. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011) (citation omitted). Rather, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the” slip op. at 53

  Patent outcomesUS 10,945,807 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,945,807
• Apple Inc. v. Mozido, Inc.Some claims unpatentable
  PTAB · Jan 2, 2024 · IPR2022-01150 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–4, 6–11, 13–18, 20, and 21 are unpatentable as obvious over Easterly and Luz; claims 5, 12, and 19 were not shown unpatentable.

  RulingsFinal written decision

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

    “Petitioner asserts that “no claim term requires express construction.” Pet. 12. During trial, Patent Owner did not provide any explicit claim constructions. See PO Resp. 14. Patent Owner, however, asserts “the preamble is limiting because it provides necessary antecedent basis for ‘the computer system’ which is recited later in the claim.” Id. As demonstrated in our analysis below, we need not construe any claim terms or phrases to resolve the controversy before us. 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))). Specifically, we need not determine whether the “computer system” recited in the preamble should be treated as limiting, because, even if it were, Petitioner demonstrates how Easterly satisfies this claim feature. See infra Section II.D.3a.” slip op. at 6

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art in August of 2012 would have had a working knowledge of the software arts that are pertinent to the ’785 patent. That person would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of software programming. Lack of work experience can be remedied by additional education, and vice versa. definition of the level of skill in the art as Petitioner, asserting that a person of ordinary skill in the art as of the effective filing date of the ’785 Patent would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development involving network-based monetary transaction systems. . . . Lack of work experience can be remedied by additional education, and vice versa. . . . Appropriate experience could substitute for education. PO Resp. 1 (citing Ex. 2001 ¶ 37). We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’785 Patent Specification and the asserted prior art, and does not materially differ from Patent Owner’s definition.” slip op. at 6

  • Strike new argumentNew argument disregardedDecided for petitioner

    “6 In the Sur-reply, Patent Owner presents the following new arguments for the first time: (1) “[t]he Petition fails to explain why a merchant system that already knows its own merchant preferences would need to encode this information into a barcode so that the same merchant system can apply a set of rules with those preferences to identify the newly selected network;” (2) the Petition “fails to meet the claim language, which requires that the selected debit network be identified in the scannable code, rather than something that the merchant system figures out on its own by applying rules to other debit networks identified in the scannable code;” and (3) “[t]he Petition has failed to meet its burden to demonstrate by a preponderance of the evidence that the relied on references fairly suggest including the selected debit network in combination with the customer preferred debit network and merchant preferred debit network in the claimed scannable code, as required by the Challenged Claims.” PO Sur-reply 14–16 (quoting Pet. 41–42). Patent Owner does not identify arguments in the Reply to which these Sur-reply arguments are responsive. See id. Patent Owner’s belated new arguments exceed the proper scope of a sur-reply and are not considered in rendering this Final Written Decision. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply . . . .”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (“CTPG,” available at https://www.uspto.gov/ TrialPracticeGuideConsolidated) 73–74 (“Sur-replies should only respond to arguments made in reply briefs . . . .”), 74 (“a reply or sur-reply that raises a new issue . . . may not be considered.”)” slip op. at 25

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

    “combining prior art elements according to known methods to yield predictable results. See Pet. 21 (citing Ex. 1003 ¶ 50). Petitioner asserts that the combination is explicitly suggested by Easterly because “Easterly’s barcode ‘contains all of the data required to authenticate, authorize, clear, and settle a transaction,’” and is “‘able to incorporate information sufficient to identify the parties to a transaction and all other relevant information regarding the transaction.’” Id. (quoting Ex. 1005 ¶¶ 18, 20) (emphasis omitted); see Pet. 22 (similar argument, quoting Ex. 1005 ¶ 18). According to Petitioner, “because Easterly notes that price is pertinent to the transaction, and that the barcode includes all the data required to process the transaction, or relevant to the transaction, it would have been obvious for the barcode to include the total price.” Pet. 21 (citing Ex. 1003 ¶ 51). Petitioner also asserts that a person of ordinary skill in the art “would have understood would be important and thus obvious to include within the barcode that is used at point-of-sale terminals.” Pet. 22 (citing Ex. 1003 ¶ 52). According to Petitioner, [g]iven Easterly’s suggestion that the barcode includes the total price and items subject to a transaction, along with Luz’s explicit teaching of a barcode including such information, a [person of ordinary skill in the art] would have found it obvious for Easterly’s barcode to include price and items of the transaction. . . . Including such information as the total price would have yielded the predictable result of having the barcode include data that is relevant to the transaction. Pet. 22–23 (citing Ex. 1003 ¶ 54). Based on the entire record, including Petitioner’s citations to Easterly, Luz, and Dr. Houh’s testimony (Ex. 1003), we are persuaded by a preponderance of the evidence that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art at the time of the invention to include a total payment amount that is to be paid in the embedded payment information of Easterly’s barcode. See Pet. 21–25, 34–35; KSR, 550 U.S. at 418.” slip op. at 15

  Patent outcomesUS 9,189,785 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,189,785
• Microsoft Corporation v. Throughputer, Inc.Some claims unpatentable
  PTAB · Sep 18, 2023 · IPR2022-00574 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Stevens and Smetana, with Daly added for claim 2; claims 8–14 and 21–24 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “science, computer engineering, or a related field, and 2-3 years of practical computer programming or engineering experience, including experience designing or researching parallel processing systems.” Pet. 6–7 (citing Ex. 1003 ¶¶ 18–20). Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill, and Dr. Smith’s testimony is based on a similar definition. See Ex. 2002 ¶ 15. We adopt Petitioner’s definition of the level of ordinary skill in the art and we apply it in our obviousness evaluations below. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’353 patent and the asserted prior art.” slip op. at 8

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

    “We determine that no aspects of the challenged claims require explicit construction. See, e.g., 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 9

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

    “h. Conclusion for Claim 1 Petitioner has persuasively shown that the combination of Stevens and Smetana teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references. Thus, regarding claim 1, we determine that Petitioner has shown, by a preponderance of the evidence, that the claimed invention as a whole would have been obvious over the combination of Stevens and Smetana.” slip op. at 25

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

    “We find that Smetana teaches the implementation of multiplexers in hardware. See, e.g., Ex. 1005, 2:35–37, 2:60–4:3, Fig. 2. We also find that Stevens teaches matrices/nodes 150/800 that are sometimes dedicated to a particular task. See, e.g., Ex. 1003 ¶¶ 112–113; Ex. 1004 ¶¶ 95, 97, 133– 134, 137, 190. Furthermore, Petitioner persuasively shows that an ordinarily skilled artisan would have implemented Stevens’s multiplexers 280 and 955 as hardware multiplexers based on the teachings of Smetana to obtain the benefits of reduced propagation delay and reduced power consumption. See, e.g., Ex. 1003 ¶¶ 74–75; Ex. 1005, 1:13–18. We note that Stevens already describes the ACE as an integrated circuit hardware platform (see Ex. 1004 ¶¶ 2–3, 5), which supports that an ordinarily skilled artisan would have expected success in implementing the components of the ACE, such as Stevens’s multiplexers, as hardware resources based on Smetana’s teachings. See Pet. 27 (citing, inter alia, Ex. 1003 ¶¶ 74–75, 111).” slip op. at 23

  Patent outcomesUS 10,318,353 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,318,353

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.