• 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
• Allstate Insurance Company v. Atos, LLCSome claims unpatentable
  PTAB · Jan 30, 2026 · IPR2021-01449 · APJ Jon M Jurgovan · IPR · Remand

  Claims 3–5 are unpatentable; claims 1 and 2 are not shown unpatentable. Claims 3 and 4 are obvious over the applied grounds under the remand construction of “movement vector.”

  RulingsRemand decision

  • RemandOther

    “was incorrect, vacated the Final Written Decision as to claims 3 and 4, and remanded the case to the Board to determine the ordinary and customary meaning of “movement vector” and decide the outcome for claims 3 and 4 in accordance with that meaning. Atos, LLC v. Allstate Insurance Company, 2025 WL 1482404, at *5 (Fed. Cir. May 23, 2025); Paper 35 (“Federal Circuit Remand,” “Remand,” or “Fed. Cir. Remand”). Pursuant to the Federal Circuit’s instructions, the Board authorized the” slip op. at 3

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

    “considered individually and together, have well-understood, common meanings to ordinarily skilled artisans as of the invention date, reflected by the ’174 patent’s specification and other evidence of record noted above. Accordingly, we determine that the ordinary and customary meaning of “movement vector” is “a vector indicating movement of an object.” 3) “operation indicator” Petitioner” slip op. at 20

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

    “Dr. Kanellakopoulos’s explanation that angular momentum is not inherent to an object, and its computation requires an arbitrary choice of a point of origin that has no physical meaning in the context of vehicle motion, also supports Patent Owner’s position. Id. ¶ 71 (citing Ex. 2004, 262). Accordingly, Patent Owner’s argument, that angular momentum cannot be used to detect a vehicle turning, is persuasive. Id. We also find persuasive, as Dr. Kanellakopoulos explains, that Petitioner’s argument regarding the figure on Kleppner 234 is based on misinterpretation of the vectors in that figure. Id. ¶ 67 (explaining that Kleppner 233–234 does not depict a gravity vector).” slip op. at 35

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

    “Kleppner does not disclose a rotation vector, a person of ordinary skill would have used the knowledge of a rotation vector (because it is a term of art) alongside Kleppner’s teaching, to arrive at claim 1. See Pet. Reply 11. This argument does not satisfy Petitioner’s burden to provide articulated reasoning with some rational underpinning to support the conclusion of obviousness. See KSR, 550 U.S. at 419 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner does not explain which teaching of Kleppner a person of ordinary skill would have selected and combined with their knowledge of a rotation vector to yield the method of claim 1, or explain why a person of ordinary skill would have recognized based on Kleppner that estimating the angle between a rotation vector and gravity vector could be used to detect a vehicle turning. Nor does Petitioner respond to Patent Owner’s assertion that Kleppner provides no rationale for estimating an angle of alignment between a rotation vector and gravity vector as a way of detecting a vehicle turning. See Ex. 2001 ¶ 65.” slip op. at 35

  Patent outcomesUS 9,846,174 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,846,174
• 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
• Dexcom, Inc. v. Abbott Diabetes Care Inc.Some claims unpatentable
  PTAB · Jul 10, 2023 · IPR2022-00605 · APJ Cynthia M Hardman · IPR · Final written decision

  Claims 1–6, 8–10, and 12–17 are unpatentable over Gravesen and Brister; claims 7, 11, and 18–28 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The person of ordinary skill in the art as of the earliest possible effective filing date (“POSITA”) would have had a Bachelor’s degree in Bioengineering, Mechanical Engineering, Electrical Engineering, or a related subject, and one or more years of experience researching, developing and/or designing insertable medical devices, including, e.g., systems for implanting wearable medical devices such as cannulas, infusion sets, and analyte sensors, or equivalent experience. Less work experience may be compensated by a higher level of education, such as a Master’s Degree, and vice versa. Pet. 14–15 (citing Ex. 1003 (Fletcher Decl.) ¶ 22). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 11 n.1. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11

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

    “On the full trial record, we again find that Patent Owner’s proposed narrowing is unwarranted. First, the intrinsic record does not support Patent Owner’s required “central” axis. Patent Owner argues that the Specification describes two inserter embodiments as having “rotors,” and those rotors have a central axis. PO Resp. 17–18 (citing Ex. 1001, 29:25–28, 29:55–59, Figs. 32, 45). Patent Owner, however, fails to explain why those embodiments should be understood to limit the claims. For example, in Phillips, the Federal Circuit “expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Phillips, 415 F.3d at 1323; see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”). Second, turning to the extrinsic evidence of record, Dr. Fletcher points to a general dictionary definition indicating that a rotor is simply a “rotating member.” Ex. 1003 (Fletcher Decl.) ¶ 81 (citing Ex. 1025 (dictionary excerpts), 1). In contrast, Dr. Cima provides no evidence corroborating his evidence. The language Patent Owner quotes from the Petition comes from a “Dictionary of Mechanical Engineering.” See Pet. 38 n.9 (quoting Ex. 1024, 328). This contradicts Patent Owner’s argument that Petitioner’s proposed construction “has no basis in mechanical engineering.” PO Resp. 19. view that a rotor must rotate on a central axis. He cites a textbook indicating that “[r]otational motion needs to take place around an appropriate axis,” but he does not explain whether or why the “appropriate axis” must necessarily be a “central axis.” Ex. 2024 (Cima Decl.) ¶ 179 (quoting Ex. 2040 (Rotordynamics) 2 (emphasis added)). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Although the Petition does state that a person of ordinary skill in the art “would understand the plain and ordinary meaning of a ‘recess’ to include ‘an indentation in a line or surface (as an alcove in a room),’” the Petition does not specify what else is “include[d]” in this term, nor does it specify that the plain and ordinary meaning of “recess” includes the entire interior of a housing. The Petition also does not invoke the Specification as demonstrating that the plain and ordinary meaning of “recess” includes the entire housing.13 Pet. 64 (emphasis added). Petitioner’s belated proposal also conflicts with the language of the claims themselves. Independent claim 1 recites “a rotor disposed within the inserter housing.” Ex. 1001, 43:42. Dependent claim 7 narrows claim 1 by reciting that “the housing comprises a recess in which the rotor is received.” Id. at 44:11–12. If the interior of the inserter housing and the recess could be one and the same as Petitioner proposes, there would be no need for claim 7, because it would not further limit claim 1. See 35 U.S.C. § 112(d) (“a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed”); see also Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1370 (Fed. Cir. 2005) (“The concept of claim differentiation ‘normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend.’”) (quoting Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999)). Accordingly, we decline Petitioner’s belated request to construe “recess” to include “an entire cavity of a housing or a cylinder.” 13 We acknowledge that Petitioner argued that the entire interior of Gravesen’s housing maps to the claimed “recess,” but this was in the context of comparing the prior art to the claim as construed. Indeed, Petitioner asserted that “the space within [Gravesen’s] housing is an alcove.” Pet. 64– 65 (emphasis added). In sum, Petitioner did not timely argue that the plain and ordinary meaning of the term “recess” includes an entire cavity of a housing or a cylinder. We adopt the only construction Petitioner offered and supported in the Petition. In view of the above, we construe “recess” as meaning “an indentation in a line or surface (as an alcove in a room).”” slip op. at 16

  Patent outcomesUS 10,945,649 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,945,649
• Pelican Biothermal, LLC v. Va-Q-Tec AGSome claims unpatentable
  PTAB · Jun 16, 2023 · PGR2021-00085 · APJ Barry L Grossman · PGR · Final written decision

  The Board granted the motion to amend but held amended claim 64 unpatentable as anticipated by NanoCool 98596-type products and obvious over the cited combinations; all other amended claims were not shown unpatentable.

  RulingsFinal written decision

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

    “VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has demonstrated by a preponderance of the evidence that amended claim 64 is unpatentable; FURTHER ORDERED that Patent Owner’s Non-Contingent Motion to Amend is granted for claims 64 and denied for all other amended claims; and” slip op. at 77

  • ExcludeMotion to exclude, deniedDenied

    “A. Status as Prior Art Is a Substantive Issue, Not an Evidentiary Issue. A motion to exclude is not an appropriate mechanism for challenging the sufficiency of evidence, such as whether a reference qualifies as prior art, or the proper weight that should be afforded an argument. See Flir Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 113, 4, 8–9 (PTAB September 3, 2015); PTAB Consol. Trial Practice Guide 79 (Nov. 30 Mr. Zumwalt testifies that other NanoCool products, designated by product number 85430 and 98630, also have the same configuration as the 98830 product and are made by the same process. Thus, “the 98830, 85430, and 98630 products can be collectively referred to as ‘98830-type’ products all having the same relevant design.” Ex. 1030 ¶ 17. 2019) (“A motion to exclude . . . may not be used to challenge the sufficiency of the evidence to prove a particular fact. A motion to exclude is not a vehicle for addressing the weight to be given evidence—arguments regarding weight should appear only in the merits documents.”); Caterpillar Inc. v. Wirtgen Am., Inc., IPR2017-02187, Paper 42,17 (PTAB May 21, 2019) (status as prior art “is a substantive issue, not an evidentiary issue.”) Thus, whether the NanoCool 98830 product is prior art is not the proper basis for Patent Owner’s Motion to Exclude evidence concerning the NanoCool 98830 product.” slip op. at 29

  • Skill levelSkill level board ownOther

    “Neither Petitioner nor Mr. Harber provide any analysis of the factors pertinent to a determination of the level of ordinary skill, identified above, to support their conclusory statements. We give Mr. Harber’s conclusory testimony minimal probative weight. 37 C.F.R. § 42.64(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.”). Moreover, there is no persuasive evidence to which we have been directed of the need for specific education or experience in biological or chemical technologies related to the claimed containers and inserts.” slip op. at 26

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “With regard to the level of ordinary skill in the art, Petitioner asserts that a person of ordinary skill would have had “a bachelor’s degree or higher degree in biological, chemical or mechanical engineering, or related sciences, and at least two to five years of experience in designing and testing ISCs [insulated shipping containers] depending on education level.” Pet. 9 (emphasis added) (citing Ex. 1002 ¶¶ 23–24). Exhibit 1002 is the Declaration testimony of Mr. Paul Haber. Mr. Harber actually states a slightly different level of ordinary skill. Mr. Harber testifies: The hypothetical POSITA would have: (i) at least a bachelor’s degree in biological, chemical or mechanical engineering, or related sciences, and have at least three to five years of experience in designing and testing ISCs [Insulated Shipping Containers][29]. Such a person may also have (ii) a higher level degree, such as a PhD and/or Master’s degree in engineering, or related sciences, and have at least two to three years of experience in designing and testing ISCs. 29 See Ex. 1002 ¶ 23. Ex. 1002 ¶ 24 (emphasis added). Mr. Harber also testifies that “[t]hese descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.” Id.” slip op. at 25

  Patent outcomesUS 10,766,685 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,766,685
• PNC Bank N.A. v. United Services Automobile AssociationSome claims unpatentable
  PTAB · May 10, 2023 · IPR2022-00076 · APJ Juliet Mitchell Dirba · IPR · Final written decision

  Claims 1 and 8–20 are unpatentable as obvious; claims 2–7 were not shown unpatentable because the petitioner did not establish motivation to combine for their error-processing limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in electrical engineering, computer science, computer engineering, or equivalent field” and “two years of prior experience with image capturing/scanning technology, involving transferring and processing of image data to and at a server.” Pet. 14 (citing Ex. 1002 ¶ 45). Petitioner further asserts that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. For purposes of the Institution Decision, we adopted Petitioner’s proposal (Inst. Dec. 16), and neither party alleges that a different level of ordinary skill should be applied in this proceeding (see PO Resp. 5; Pet. Reply). In this Decision, we again adopt the level of ordinary skill proposed by Petitioner. We are satisfied that it generally comports with the level of and the asserted prior art. Accord Inst. Dec. 15–16.” slip op. at 11

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

    “In the Petition, Petitioner states that it is unnecessary to construe any claim terms or phrases (Pet. 12–14), but for two phrases in claim 1, Petitioner specifically argues that the prior art teaches or suggests the phrase under each of two alternate meanings (id. at 34–35, 37). In the Institution Decision, we agreed with Petitioner’s primary understanding of these phrases and, as a result, did not reach the alternative contentions. Inst. Dec. 33 n.18, 38 n.21. At trial, Patent Owner states that claim construction is unnecessary to resolve the issues disputed in this proceeding. PO Resp. 6; Tr. 46:4–16. Petitioner agrees, but contends that Patent Owner’s arguments regarding dependent claim 3 are premised on a narrowing construction of one of its terms. Tr. 15:4–16:2. Patent Owner contends that the plain and ordinary meaning of the terms in that claim should apply. Id. at 46:12–16. We agree that it is not necessary to expressly construe any claim terms or phrases in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad 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 12

  • BurdenNot shown unpatentable

    “motivated to add error processing to Garcia’s mobile phone so that it could address errors before transmitting the check image in order “to avoid wasting communications resources and adding delays.” Pet. 42. But, Petitioner does not support this rationale with a persuasive explanation or evidence. Indeed, we assume that Petitioner’s theory is that the error checking at the mobile device would have conserved bandwidth and reduced delay because it would have allowed the mobile device to identify some unsuitable images before they were sent to the payee bank; however, the Petition does not actually include an explanation to this effect. Rather, it simply states that an ordinary artisan would have known that mobile telephone networks (such as that used by Garcia) “are bandwidth and resource-constrained, and that communications over such networks takes time.” Id.; see also Ex. 1002 ¶ 115. However, all networks have bandwidth and resource constraints, and all communications take time, and neither the Petition nor Dr. Mowry explain why these considerations would have been relevant to an ordinary artisan implementing Garcia. Indeed, the Petition next asserts that “Byrne provides the requisite solution to this problem” (Pet. 42), but neither the Petition nor Dr. Mowry identify any problem. For example, Dr. Mowry does not testify that an ordinary artisan would have expected Garcia’s system to consume excessive bandwidth or incur for claim 2). In addition, Petitioner recognizes that the verification process is performed by the payee bank in Garcia, yet does not address the fact that its proposal would apparently shift a portion of the verification process to the mobile phone. See Pet. 40–44. Dr. Mowry’s trial testimony casts further doubt on Petitioner’s rationale for this claim. Dr. Mowry testifies that conserving bandwidth would “potentially” have been one of the goals of an ordinary artisan “depend[ing] on how precious their resource is.” Ex. 2020, 68:12–24. But Dr. Mowry “wouldn’t necessarily characterize [Garcia] as bandwidth intensive.” Id. at 76:13–23. In addition, he disagreed that “in the Garcia system, the motivation would have been to shift it to the client side for the verification,” noting simply that “[t]here are tradeoffs” associated with doing the verification processing on either the client or the server. Id. at 241:22– 242:13. Petitioner attempts to limit the impact of Dr. Mowry’s answers (Pet. Reply 16); however, the fact remains that Petitioner has the burden of proof, and it does not identify persuasive evidence to support its contention. Petitioner’s Reply asserts that these considerations were “particularly important in 2006, when 3G bandwidth was at a premium” (id. at 22 (citing Ex. 1029 ¶ 49)), but neither Petitioner nor Dr. Mowry provide analysis or evidence to support this conclusory assertion. Moreover, the Petition also fails to address whether the proposed combination would have, in fact, conserved communications resources or reduced delays. In Petitioner’s proposed combination, Byrne’s thin client application would be downloaded to Garcia’s mobile phone at each use (which would require communication resources and incur latency), but the Petition fails to address whether the net result of the proposed combination 148:1 (Dr. Mowry agreeing that the impact of downloading the thin client is not discussed in his report). Moreover, Garcia touts the “speed” of its process, stating that its “immediate processing . . . allows the immediate availability in the user’s account” (Ex. 1003, 7:18–8:3), which indicates that an ordinary artisan would not have perceived a problematic delay in Garcia’s system. Petitioner’s attempt to shift the burden to Patent Owner to determine whether or not its purported benefits would be realized (see Pet. Reply 17) is unavailing. In its Reply, Petitioner cites testimony from Dr. Mowry (see Ex. 1029 ¶ 37), but it simply compares the size of a compressed image with the size of a “large” application. This evidence does not outweigh the other evidence above, and it was submitted too late to remedy the Petition. See supra § II.A.; see also Trial Practice Guide 73 (explaining that a 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”). Finally, on this record, we are also not persuaded by Petitioner’s” slip op. at 60

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “would have been motivated to implement Garcia’s application by downloading, onto the mobile device, a thin client application, as disclosed by Byrne. See Pet. 19–25. Byrne touts the benefits of downloading a thin client rather than storing an application on a user’s device (Ex. 1004 ¶¶ 45– 46; see also id. ¶¶ 47–48), and Dr. Mowry testifies that an ordinary artisan would have understood downloading a thin client to be a well-known way of distributing software in the relevant time period and suited for mobile devices (Ex. 1002 ¶¶ 64–65, 70). In addition, Dr. Mowry testifies that a thin client improves security and ease of software maintenance. Id. ¶ 65 (citing Ex. 1004 ¶¶ 46–47); see also Ex. 1033, 140:11–141:2 (Dr. Creusere agreeing that thin clients “dramatically simplif[y]” software maintenance), 143:13–20 (agreeing that security is important for financial data); Ex. 1005 ¶¶ 20–21 (evidence that the general background knowledge in the art identifies security as a concern for remote check deposit).14 In addition, we agree with Petitioner (see Pet. 21–22; Ex. 1002 ¶¶ 66, 72) that an ordinary artisan would have understood such an implementation to apply a known 14 Patent Owner’s argument that security and software maintenance would have instead weighed against the proposed combination (see, e.g., PO Sur-reply 9–10) is untimely because it was not advanced in the Response and is not fairly responsive to the Reply. See supra § II.A; Pet. Reply 15–16 (noting that the Response had not addressed these issues). Moreover, even if this argument had been properly raised, it would not be persuasive because Patent Owner does not identify persuasive evidence to support its position. See, e.g., Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). (Garcia’s mobile phone) with predictable results. We are also persuaded that a person of ordinary skill in the art would have been motivated to implement Garcia’s application such that the application provides a user-interface and controls the image capture device, as disclosed by Byrne. See, e.g., Pet. 22–23. Garcia suggests that the application should perform these functions (see Ex. 1003, 5:1–6:10, 9:19– 10:18), and we credit Dr. Mowry’s testimony that an ordinary artisan would find this desirable (see Ex. 1002 ¶¶ 65, 67). Moreover, the references lend themselves to the combination because Garcia and Byrne both describe remotely depositing a check via the Internet using software on a user’s device that opens an interactive session, and both perform substantially similar steps. See Pet. 22–23; Ex. 1003, 9:21–10:3, 10:10–18, 11:7–15; Ex. 1004 ¶¶ 41, 48, 174–175, 177–178. Finally, Dr. Mowry testifies that the ordinary artisan would have had a reasonable expectation of success in implementing the combination, and he provides supporting analysis and evidence. Ex. 1002 ¶¶ 68–72; see also Ex. 1029 ¶¶ 38–39. We credit this testimony from Dr. Mowry because it draws reasonable inferences and is supported by the cited evidence.” slip op. at 25

  Patent outcomesUS 10,769,598 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,769,598
• Edwards Lifesciences Corporation / Edwards Lifesciences LLC v. Aortic Innovations, LLCSome claims unpatentable
  PTAB · Apr 24, 2023 · IPR2022-00193 · APJ John G New · IPR · Final written decision

  Claims 1–8, 10–18, and 20 are unpatentable as obvious over Spenser and Spenser II; claims 9 and 19 were not shown unpatentable.

  RulingsFinal written decision

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

    “Spenser II provides that its cloth “has a thickness ranging from about 1 to 5 mm.” Spenser and Levi both teach a valve that has a diameter of 25 mm and 26 mm respectively when fully expanded. Accordingly, even if we were to assume a POSITA used the thinnest possible cloth in Spenser II, Petitioner’s proposed combination using the smaller Spenser 25 mm diameter (12.5 mm radius) expanded valve covered by a 1 mm cloth resulting in a 27 mm diameter (13.5 mm radius) valve…. From this we can conservatively estimate how much cloth is required for a cross-section of the proposed device (Acloth) by calculating the total area of a cross-section of the cloth-covered valve (π*(13.5 mm)2) and subtracting the area of a cross-section of just the valve (π*(12.5 mm)2). Acloth = π*(13.5 mm)2 - π*(12.5 mm)2 = 81.68 mm2 Accordingly, Petitioner’s proposed combination requires 81.68 mm2 of outer cloth in a given cross-section of the device.” slip op. at 78

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia no nexusDecided for petitioner

    “that the claims are not obvious over Spenser and Spenser II because Petitioner fails to demonstrate that any of its proposed prior art combinations disclose or render obvious a valve with a “sealing material” that is delivered “endovascularly.” PO Resp. 11. Patent Owner also argues Petitioner fails to prove that any of its combinations disclose or render obvious a “fibrous network” “in overlapping radial alignment with native valve leaflets.” Id. at 73. Additionally, Patent Owner contends that objective indicia of non-obviousness (also called secondary considerations) support a conclusion that the challenged claims are nonobvious. Id. at 2. Finally, Patent Owner contends that the testimony of Petitioner’s expert, Dr. Buller, should be given little or no weight, because, Patent Owner argues, he has no expertise in the issues at hand. Id. at 90.” slip op. at 16

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “that the claims are not obvious over Spenser and Spenser II because Petitioner fails to demonstrate that any of its proposed prior art combinations disclose or render obvious a valve with a “sealing material” that is delivered “endovascularly.” PO Resp. 11. Patent Owner also argues Petitioner fails to prove that any of its combinations disclose or render obvious a “fibrous network” “in overlapping radial alignment with native valve leaflets.” Id. at 73. Additionally, Patent Owner contends that objective indicia of non-obviousness (also called secondary considerations) support a conclusion that the challenged claims are nonobvious. Id. at 2. Finally, Patent Owner contends that the testimony of Petitioner’s expert, Dr. Buller, should be given little or no weight, because, Patent Owner argues, he has no expertise in the issues at hand. Id. at 90.” slip op. at 16

  Patent outcomesUS 10,881,538 mixed
  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,881,538

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.