- PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A patent claim is unpatentable under 35 U.S.C. § 103(a) when the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - PTAB · Sep 3, 2024 · IPR2023-00797 · APJ Stephen E Belisle · IPR · Remand
The Board denied institution because Honda did not show a reasonable likelihood that claims 23, 24, 26, or 27 were obvious over either asserted combination.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 23, 24, 26, and 27 of the ’302 patent. Accordingly, constrained by the record before us, we deny institution of an inter partes review of the ’302 patent.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We find Patent Owner’s arguments persuasive, and the above testimony of its technical expert, Mr. Alberth, even more so. Based on the foregoing and the record before us, we find Petitioner fails to sufficiently show that the ’586 Provisional lacks written description support for the feature of a transmitter configured to form and transmit, in response to a received request, “the probing signal with a code sequence modulated in the frequency domain,” as recited in independent claim 23. Although not its burden, we find Patent Owner sufficiently evidences that the disclosure of the ’586 Provisional would have reasonably conveyed to skilled artisans that the inventor possessed the features of the subject limitation. 5. Conclusion For the reasons expressed above, and based on the record before us, we determine Petitioner has not sufficiently shown that Koo is prior art to the Challenged Claims. Accordingly, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing that any of the Challenged Claims is unpatentable as obvious over the combination of 802.16a-2003, 802.16-2001, and Koo.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“But in doing so, Petitioner ignores the context in which the skilled artisan would have read Kitroser: where IEEE, the governing body issuing the Call for Contributions, itself explicitly questioned “if [implementing 802.16a in a mobile systems environment] is technically feasible and, if so, at what level” (Ex. 2007, 1 (emphasis added)), and where, as noted above, Kitroser provides no explanation, support, or other commentary for its “no changes” statements, and admits such statements are “subject to change in form and content after further study” and subject to amendment and withdrawal entirely (Ex. 1007, 1–4 (emphasis added)). Based on the foregoing, although Petitioner may have identified a “reason” that the skilled artisan allegedly would have combined 802.16a with Kitroser, we are not persuaded that it is a rational reason, i.e., a reason sufficiently shown to have a rational underpinning at the time of the invention of the Challenged Claims. See KSR, 550 U.S. at 418 (To support the legal conclusion of obviousness, “there must be some articulated reasoning with some rational underpinning” for combining elements in the manner claimed. (quoting In re Kahn, 441 F.3d at 988)).” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’302 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Buehrer (Ex. 1003 ¶ 23), except that we omit the two instances of “at least” to remove the unbounded nature of the definition.” slip op. at 13
§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,771,302 - PTAB · Apr 24, 2014 · IPR2014-00107 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 were unpatentable over Goda or the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom. 2. 35 U.S.C. § 103 Grounds of Unpatentability for Claims 1–7 We are persuaded that, as applied by Petitioner, none of the An, Kim, Toshiba, or Lee references remedies Goda’s deficiency in teaching “the contact hole is dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit.” Prelim. Resp. 30–31; see Pet. 30–58. Petitioner does not rely on any reference other than Goda for this limitation. Therefore, Petitioner does not establish a reasonable likelihood of prevailing on its assertions that claim 1, and claims 2–7, dependent therefrom, would have been obvious over the following combinations of references: (1) Goda and An; (2) Goda, An, and/or Kim; (3) Goda, An, and/or Kim, and Lee; (4) Goda and Toshiba; and (5) Goda, Toshiba, and Lee.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“We are not persuaded by Patent Owner’s assertions that the broadest reasonable interpretation of “depth of focus” or “DOF” requires the exposed photoresist to generate line widths within specifications and adequate profiles, or otherwise requires maintaining focus throughout the entire depth of the photoresist. The ’922 Patent does not provide a sufficient factual basis to support Patent Owner’s assertions, because the ’922 Patent is silent regarding exposed photoresist and maintaining focus throughout the entire depth of the photoresist. We are persuaded that the definition in the Specification cited by Petitioner applies. Accordingly, applying the broadest reasonable interpretation, “depth of focus” and “DOF” means “the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” Ex. 1001, col. 2, ll. 20–22.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“2. “DOF Limit” Petitioner and Patent Owner do not provide a proposed construction for “DOF limit,” as recited in claim 1. Consistent with the broadest reasonable interpretation of “depth of focus” and “DOF,” “DOF limit” means “a limit associated with the range of lens-wafer distances over which line widths are maintained within specifications and resist profiles are adequate.” See id.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are persuaded that Petitioner’s arguments and supporting evidence do not demonstrate sufficiently that Goda describes a contact hole dimensioned along the major axis so as to maintain focus of an image of the contact hole as the minor axis is reduced in size towards a DOF limit. To the extent that Petitioner asserts that a “DOF margin” is synonymous with a “DOF limit,” Petitioner’s arguments remain unavailing. Petitioner’s assertion that the DOF margin discussed in the ’922 Patent is a type of processing margin discussed in Goda (Pet. 18) (i.e., Goda’s processing margin describes a DOF margin) is not supported by a sufficient underlying factual basis. Ex. 1002 ¶ 48; 37 C.F.R. § 42.65(a). Thus, on the record before us, Petitioner does not demonstrate a reasonable likelihood of prevailing on its assertion that Goda anticipates independent claim 1, and claims 6 and 7 dependent therefrom.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,018,922 - PTAB · Mar 18, 2014 · IPR2013-00626 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all challenged claims because Superior did not show a reasonable likelihood that the cited references taught layers permanently affixed together.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“the written description define the term. In the absence of an express definition, it is reasonable to consult a general dictionary definition of the word for guidance in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art. Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). “Permanent” is commonly understood to mean “continuing or enduring without fundamental or marked change; stable.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 922 (11th ed. 2005). To “affix” means “to attach physically.” Id. at 21. Based on these definitions, the ordinary meaning of the phrase permanently affixed would be “attached physically such that the attachment continues or endures without fundamental or marked change.” Thus, a flexible inner layer and an exterior hard layer are permanently affixed when they cannot be separated without “fundamental[ly] or marked[ly] chang[ing]” – i.e., damaging – the layers or the bond between the layers. For purposes of this decision, therefore, permanently affixed, in the context of claim 1, requires that the flexible inner layer and the outer hard layer cannot be separated without damaging the layers or the bond between the layers.1” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on the current record, we are not persuaded that Superior is reasonably likely to show that Seo teaches a flexible inner layer and an exterior hard layer permanently affixed together. As Speck points out, Seo teaches that it is “impossible” to apply a different material to the surface of the body base of the phone case. Ex. 1002, 2:7-9. Neither Superior nor Dr. Kazmer addresses this teaching or explains how it can be consistent with the notion that Seo teaches permanently affixing Seo’s soft silicone layer to the hard resin layer. On the contrary, this teaching suggests that a soft silicone layer would not adhere or bond to a hard resin layer, and thus must be attached to the hard layer in the mechanical manner that Seo teaches. Moreover, we are not persuaded that Seo’s mechanical attachment method is “permanently affixed,” such that the hard and soft layers cannot be separated without damaging the layers or the rivets that connect the layers. Superior relies on Seo’s teaching that the layers are “integrally formed” or “integrally attached” to support this contention. Pet. 10. But there is insufficient evidence in the record to persuade us that “integrally” attached necessarily means “permanently” attached. Moreover, the combination of the softness and flexibility of Seo’s inner silicone layer with the “impossibility” of applying that layer to the surface of Seo’s hard outer layer leaves open the possibility that the layers may be separated without damaging the layers or the rivets that connect the layers. Thus, we are not persuaded on the present record that Superior is reasonably likely to prevail in showing that any of the challenged claims is anticipated by Seo, would have been obvious over Seo, or would have been obvious over Seo and Cozip.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“The above images depict perspective and front views of the Cozip case. Ex. 1003 at 8, 10. Superior asserts that Cozip discloses a case with “an exterior hard layer ha[ving] four corner joints with cut-away portions.” Pet. 28. Superior argues that “it would have been obvious to one of ordinary skill in the art to fill the shell and corners of Cozip . . . with the flexible layer of Seo.” Id. at 33. Superior, therefore, is proposing that a person of ordinary skill would attach Seo’s soft silicone layer to Cozip’s polycarbonate case, with Cozip’s cut-away portions serving as the “dispensing portions” as taught by Seo. Superior reasons that it would be obvious to fill permanently the cut away portion of Cozip with the flexible inner layer 20 of Seo to attach tightly and integrally the inner layer 20 to Cozip’s outer layer as taught by Seo. Pet. 39 (citing Ex. 1002, 5:9-16). But Superior does not explain how attaching Seo’s inner silicone layer to Cozip’s case would result in “permanently affix[ing]” the two layers together, given that Seo teaches that it is “impossible to apply different material to the surface of the body case.” Ex. 1002, 2:7-9. Accordingly, as with the grounds based on Seo as the primary reference, we are not persuaded that Superior is reasonably likely to show that a person of ordinary skill in the art at the time of the invention would “permanently affix” Seo’s soft silicone layer to Cozip’s polycarbonate case. Therefore, we do not institute an inter partes review on any of the grounds based on Cozip as the primary reference.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,204,561
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.