- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution deniedPTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution
The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.
In the decision…fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1. For the foregoing reasons, Petitioner has not…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,499,168 - Helmerich & Payne International Drilling Company / Helmerich & Payne Technologies, LLC et al. v. Nabors Drilling Technologies USA, Inc.Institution deniedPTAB · Sep 21, 2021 · IPR2021-00621 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution on all challenged claims because the petition failed to show a reasonable likelihood of success on at least 18 claims, and review of all 19 would be inefficient.
In the decision…prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“the monitored toolface angle, in and of itself, is indicative of a difference between the actual and desired toolface orientations as required by limitation 1[a]. Although Petitioner and Mr. Sharma point to comparing the monitored toolface angle with the tool face angle selected to achieve a desired trajectory for the bore hole, they do not identify any such comparison disclosed in Haci. Nor do they identify adequately any disclosure that Haci’s system displays or otherwise provides both the desired and measured toolface angles to the driller such that the measured toolface angle display, in conjunction with a desired toolface angle display, is indicative of the difference therebetween. At best, Petitioner and Mr. Sharma assert that the measured toolface angle could be used by the driller to determine the difference between the actual and desired toolface angles. Claim 1, however, requires the drilling operation parameter itself, which Petitioner maps to the measured toolface angle, to be indicative of the difference between the actual and desired toolface orientations.” slip op. at 21
- Other 314aInstitution denied discretionary otherInstitution denied
“institute review or don’t.” SAS, 138 S. Ct. at 1355. When a petition fails to meet the reasonable likelihood standard as to some challenges, the Board evaluates “all the challenges and determine[s] whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied.” See Consolidated Trial Practice Guide 64 (citing 37 C.F.R. §§ 316(b), 326(b)). In determining whether to institute in circumstances such as those presented here, we take into account the efficient use of the Board’s time and resources. See Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (PTAB Jan. 24, 2019) (designated informative); Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (designated informative).” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the record, we determine that no explicit construction of terms is needed to resolve the issues presented to reach a decision on institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,823,655 - Tietex International, Ltd. v. Precision Fabrics Group, Inc.Institution deniedPTAB · Feb 11, 2016 · IPR2015-01671 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution on both asserted § 103 grounds, finding no reasonable likelihood of success and exercising § 314(a) discretion for the Radwanski, Rowan, and Murch ground.
In the decision…Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citation omitted). “Rather, ‘claims should always be read in light of the specification and teaching in the underlying patent’” and “[e]ven under the broadest reasonable interpretation, the Board’s construction ‘cannot be divorced from the…
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“We approach our discretion to deny a petition on a case-by-case basis. There are sufficient reasons under the specific facts of this case to exercise our discretion to deny institution on Petitioner’s asserted ground that claims 1–30 of the ’162 patent would have been obvious over the combination of Radwanski, Rowan, and Murch. Notably, in this proceeding, the claims of the ’162 patent are so similar in scope and content to those in the ’639 patent that Petitioner is relying on the same arguments that we found to be unpersuasive in the 1248 Final Decision. See Pet. 29; 1248 Final Dec. 22. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting an inter partes review in this proceeding when the same prior art references and arguments are asserted against substantially the same claim limitations as in the 1248 IPR.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“A showing of obviousness must be supported by an articulated reasoning with rational underpinning to support a motivation to combine the prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 414 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[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.”)). An analysis regarding an apparent reason to combine known elements “should be made explicit.” Id.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“terminology as the claims in related US patent 8,501,639, which is the subject of [the] previously instituted [1248 IPR]” and argues “that for purposes of this proceeding, the same definitions should apply.” Pet. 7. In the 1248 IPR, we determined that the broadest reasonable interpretation of the term “intumescent” in light of the specification is “a substance that swells and chars upon exposure to heat or flame.” Tietex Int’l, Ltd. v. Precision Fabrics Group, Inc., Case IPR2014-01248, slip op. at 5–6 (PTAB Jan. 30, 2015) (Paper 14); see id., slip. op. at 4–5 (PTAB Jan. 27, 2016) (Paper 39). Petitioner and Patent Owner agree that “intumescent” as used in claim 1 of the ’162 patent should be interpreted the same way in this proceeding. Pet. 7; Prelim. Resp. 17. Therefore, for purposes of this Decision, we interpret “intumescent” to mean “a substance that swells and chars upon exposure to heat or flame.” B.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,796,162
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.