- Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Oct 8, 2025 · IPR2025-00701 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute when “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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’138 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–14 of the ’138 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 6. Patent Owner does not address claim construction. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“a Ph.D. or master’s degree in electrical engineering, physics, materials science, or a related field, and at least one year or four years, respectively, of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent. Pet. 8 (citing Ex. 1024 ¶¶ 25–29). Petitioner contends that less work experience can be compensated for by a higher level of experience and vice versa. Id. (citing Ex. 1024 ¶ 25). Petitioner also asserts that the proposed level of skill would be the same under any of the United States, Japanese, or PCT application dates. Id. at 8–9 (citing Ex. 1024 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s proposed level of qualifications for one of ordinary skill in the art. Prelim. Resp. 20. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’138 patent and the asserted prior art of record.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, Petitioner relies upon Parkin, and its layers 115 and 175, as the claimed first and second ferromagnetic material layers, respectively. See Pet. 10, 16. Petitioner admits that these layers are 8 In the Petition, Petitioner refers to the lower electrode “ferromagnetic layer 110’ as discussed in Claim 1[a]” in the discussion of limitation 1[d]. Pet. 18. Petitioner’s reference to “layer 110’” appears to be in error because the Petition’s discussion for limitation 1[a] refers to layer 115 of Parkin, as does Dr. Bokor’s testimony related to limitations 1[a] and 1[d]. Pet. 10; Ex. 1024 ¶¶ 109, 136. amorphous, but contends that, as Parkin discloses, these layers may be annealed. Id. at 17. Petitioner, however, refers to Parkin’s disclosure that only “a portion of the storage layer 175” is crystallized after annealing. Id. at 17–18 (citing Ex. 1062, 18:51–55) (emphasis added). Petitioner also relies upon Parkin’s “thin crystalline ferromagnetic layer” that is crystallized to teach limitation 1[d]. Id. at 18 (citing Ex. 1062, 18:55–59; Ex. 1024 ¶¶ 131–132) (emphasis added). Dr. Bokor additionally testifies that it is “Parkin’s ‘thin crystalline ferromagnetic layer’ of CoFeB” that meets the “entirely crystallized” requirement of limitation 1[d]. Ex. 1024 ¶ 132. Parkin, however, states that a thin crystalline ferromagnetic layer is formed, but “the bulk of storage layer 175 remains amorphous.” Ex. 1062, 18:55–60 (emphasis added). Petitioner fails to reconcile how its assertions that the first and second ferromagnetic layers, which are mapped to the totality of layers of 115 and 175, meet the limitation that the first and second ferromagnetic layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full depth of certain “layers” of Parkin for the teaching of the ferromagnetic layers, but then only relies upon thin portion of that depth for the assertion that the “layers” are entirely crystallized.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,367,138 - Skullcandy, Inc. v. Earin ABInstitution deniedPTAB · Sep 15, 2025 · IPR2025-00690 · APJ Monica S Ullagaddi · IPR · Director review
The Board denied institution because the petition did not show a reasonable likelihood that claims 20 and 21 were unpatentable on any asserted obviousness ground.
RulingsDirector review decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed.Cir.1986)).” slip op. at 7
- BurdenNot shown unpatentable
“Analysis of the Parties’ Contentions We agree with Patent Owner that the Petition is conclusory––the Cooperstock Declaration merely reiterates the position set forth in the Petition and does not provide sufficient detail or explanation of why Olodort’s “low power state” would have been understood by a POSITA to mean that “existing connections to a second wireless earbud and to a wireless audio streaming host device will be disconnected,” as recited in claim 20. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see Pet. 23–24; Ex. 1007 ¶¶ 84–87. We further agree that claim 38 is not directed to entering “a standby mode” as it recites “the low power state is a standby mode from which the second earpiece is awakened in response to detecting that the second earpiece has been attached to an ear.” Ex. 1002, claim 38 (emphasis added). As such, we agree with Patent Owner that Olodort’s “claim 38 contains no disclosure concerning what happens to ‘existing connections’ when exiting, let alone entering, the ‘standby mode.’” See Prelim. Resp. 9 (citing Ex. 1002, claims 32, 34, 38). We further agree with Patent Owner that the Cooperstock Declaration in paragraphs 86 and 87 sets forth an alternative obviousness theory “based on a modification to Olodort to add ‘circuitry for disconnecting the earbuds from one another and from any wireless audio streaming host device when in the low power state’” that is improperly incorporated by reference into the Petition. Prelim. Resp. 10–11 (emphasis added) (citing 35 U.S.C. § 312(a)(3) (A petition for inter partes review “may be considered only if . . . the petition identifies, in writing and with particularity . . . the evidence that supports the grounds for challenged to each claim.”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”); 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another.”)). As such, we need not and do not consider this alternative obviousness theory.” slip op. at 18
- Expert testimonyDecided for patent owner
“Analysis of the Parties’ Contentions We agree with Patent Owner that the Petition is conclusory––the Cooperstock Declaration merely reiterates the position set forth in the Petition and does not provide sufficient detail or explanation of why Olodort’s “low power state” would have been understood by a POSITA to mean that “existing connections to a second wireless earbud and to a wireless audio streaming host device will be disconnected,” as recited in claim 20. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see Pet. 23–24; Ex. 1007 ¶¶ 84–87. We further agree that claim 38 is not directed to entering “a standby mode” as it recites “the low power state is a standby mode from which the second earpiece is awakened in response to detecting that the second earpiece has been attached to an ear.” Ex. 1002, claim 38 (emphasis added). As such, we agree with Patent Owner that Olodort’s “claim 38 contains no disclosure concerning what happens to ‘existing connections’ when exiting, let alone entering, the ‘standby mode.’” See Prelim. Resp. 9 (citing Ex. 1002, claims 32, 34, 38). We further agree with Patent Owner that the Cooperstock Declaration in paragraphs 86 and 87 sets forth an alternative obviousness theory “based on a modification to Olodort to add ‘circuitry for disconnecting the earbuds from one another and from any wireless audio streaming host device when in the low power state’” that is improperly incorporated by reference into the Petition. Prelim. Resp. 10–11 (emphasis added) (citing 35 U.S.C. § 312(a)(3) (A petition for inter partes review “may be considered only if . . . the petition identifies, in writing and with particularity . . . the evidence that supports the grounds for challenged to each claim.”); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”); 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another.”)). As such, we need not and do not consider this alternative obviousness theory.” slip op. at 18
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,120 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution deniedPTAB · Aug 26, 2025 · IPR2025-00436 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Mizobuchi or Akashi anticipates any of claims 1–17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one challenged claim.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“All independent claims recite “a light engine driving circuit disposed on the substrate.” Ex. 1001, 9:59 (claim 1), 10:64 (claim 12), 12:7 (claim 15). Petitioner contends that “Mizobuchi discloses a light engine driving circuit disposed on the substrate that includes a clock data recovery (“CDR”) circuit and a power supply circuit.” See Pet. 19 (citing Ex. 1006, 3:57–4:18, 12:27–41, Figs. 2, 3A; Ex. 1003 ¶ 76 while addressing limitation 1d); see also id. at 26–28 (addressing claims 12 and 15 by cross-referencing showing for claim 1). Petitioner identifies the driving circuit on Mizobuchi’s “first circuit board” 2 in the annotated version of Mizobuchi’s Figure 2, reproduced below. See Pet. 19.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the Board may find it necessary to interpret “feedthrough device,” “interconnect device,” and “opposing arrangement.” Pet. 8–11. Patent Owner responds to Petitioner’s proposed interpretations of these terms, but contends that the Board need not interpret them to determine whether to institute review. Prelim. Resp. 17–18. For reasons that become apparent below, we agree with Patent Owner and do not expressly construe these terms. B. Legal Standards” slip op. at 4
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,313,024 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution deniedPTAB · Jul 29, 2025 · IPR2025-00434 · APJ Monica S Ullagaddi · IPR · Institution
Institution was denied for claims 1–7 because the Petition did not show a reasonable likelihood that either Shen or Soldano anticipates any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’301 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“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)). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - Precision Cancer Technologies Inc. v. Oncoustics Inc.Institution deniedPTAB · Jun 3, 2025 · IPR2025-00242 · APJ David Cotta · IPR · Institution
The Board denied institution on claims 1–20 because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has not established a reasonable likelihood of prevailing on its assertion that any of the challenged claims are unpatentable based on the grounds advanced here. Thus, for reasons explained below, we deny institution of inter partes review of claims 1–20 of the ’330 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“area” in the challenged claims was added by amendment. Ex. 1004, 181.8 In making the amendment, Applicant stated that the language added by amendment was intended to distinguish the pending claims over Uniyal,9 which Applicant characterized as disclosing a “time series” of ultrasound data. Uniyal relies on a time series of ultrasound data. In order to distinguish Uniyal, the claims have been amended to recite a single static set of ultrasound RF data in a single frame of the tissue area. As explained in the Interview, the claims rely on a signle [sic, single] “snapshot” frame of the ultrasound RF data rather than a time series or [sic, of] RF data as disclosed in Uniyal. Applicant respectfully submits the amended claims are allowable over all of the cited reference. Id. at 186–187; see also id. at 185 (Applicant’s remarks accompanying amendment, stating: “As explained in the Interview, a static set of raw ultrasound RF signals is collected for an area. This is a snapshot of the tissue area as opposed to taking a time series of RF signals”), 191 (Examiner interview summary, stating: “Inventor noted that Uniyal uses a time series US [ultrasound] data whereas the invention uses images that are non-coherent in time (e.g., a static frame)”).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“transducer, Petitioner points to Hope-Simpson’s teaching that its neural network may be “capable of ‘analyzing patterns using a with a [sic] multi-dimensional (2-or more dimensional) data set, which may also be thought of as localized data sets.’” Id. at 22 (quoting Ex. 1005 ¶ 6; alteration by Petitioner). Petitioner then asserts that “[t]he localized data sets described by Hope-Simpson are equivalent to the claimed ‘single set of raw ultrasound [RF] data forming a single frame of a tissue area.” Pet. 22 (citing Ex. 1002 ¶ 86 (testimony of Dr. Papanicolau)). But Petitioner does not explain why Hope-Simpson’s “localized data sets” equate with a single frame of a tissue area rather than, for example, a time series of frames taken at the same location. Pet. 22. Petitioner cites the testimony of Dr. Papanicolau, but Dr. Papanicolau’s testimony lacks both technical reasoning and evidentiary support; it simply mirrors the statement in Petition. Ex. 1002 ¶ 86. For this reason, we give Dr. Papanicolau’s ipse dixit testimony little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24 ,2022) (Decision Denying Institution) (precedential) (finding that conclusory testimony that “does not cite to any additional supporting evidence or provide any technical reasoning to support [that testimony] . . . is entitled to little weight”); see also, 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, to the extent this is the data that Hope Simpson provides to the processor, on this record, Petitioner has not sufficiently established that it constitutes a “single static set” of raw RF ultrasound data “forming a single frame.”” slip op. at 15
Claim constructioncites KSR · GrahamPatents in suitUS 11,602,330 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01384 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’403 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–8 of the ’403 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner “does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition.” Prelim. Resp. 17. 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 is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’403 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 26. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Importantly, Soukup indicates a different relationship between the amount of oxygen vacancy defects in the barrier layer and the barrier height, depending on which method is used. Specifically, Soukup explicitly found that “[t]he apparent barrier height determined from the zero-field intercept went up for increasing oxygen pressure [(i.e., less oxygen vacancy defects)] and the barrier height determined from the Arrhenius plot went down.” Ex. 1028, 3229 (Abstract) (emphasis added).15 That disclosure is reflected in Table I, where Soukup shows the results for three fabricated samples with increasing oxygen pressure during MgO deposition. Id. at 3233. Patent Owner provides another annotated version of Table I below (Prelim. Resp. 45): 15 Soukup’s conclusion appears to refer to the trend of the respective increasing or decreasing barrier heights values under the two different mathematical analyses methods. Annotated Table I above shows (in red) that the barrier height decreases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition, shown in the PO2 column, decreases) using the zero-field intercept method, and shows (in blue) that the barrier height increases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition decreases) using the Arrhenius plot method. Prelim. Resp. 45. In other words, Petitioner’s alleged inverse relationship is present for the zero-field intercept method, but not for the Arrhenius plot method. See id.; Pet. 37–38. “The barrier height cannot both increase and decrease with more oxygen vacancy defects,” and Petitioner does not attempt to reconcile or explain Soukup’s disparate teachings. See Prelim. Resp. 45 (emphasis omitted). We agree with Patent Owner that Petitioner is inconsistent in relying on one method as allegedly teaching a barrier height within the claimed range, while at the same time relying on the other method for a motivation under its obviousness theory. Prelim. Resp. 45–49. If a person of ordinary skill in the art would have understood that the Arrhenius plot method was the appropriate method for determining barrier height, as Petitioner argues in asserting that Soukup teaches a barrier height of 0.33 eV, that person would have understood that “the barrier height increases as oxygen vacancies increase” (in blue above), and Petitioner’s obviousness theory of adding oxygen vacancies to lower Bowen’s barrier height is incorrect. See id. at 47. If, however, a person of ordinary skill in the art would have looked to the zero-field intercept method, that person “would have understood that all of Soukup’s tested samples . . . had barrier heights” (in yellow above) “above the claimed range of 0.2–0.5 eV.” See id. at 48. Petitioner cannot have it both ways. Based on the record before us, Petitioner has not shown sufficiently” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,884,403 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01385 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’263 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–4 of the ’263 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the ’263 patent would have had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- BurdenNot shown unpatentable
“As discussed above, Petitioner fails to explain why one of ordinary skill in the art would have selected the barrier height value it relies upon. And given the disparity of Soukup’s barrier tunnel values under the different methods of analyses, the reference is, at best, ambiguous as to which values are accurately representative of barrier height. Additionally, the evidence supports that the apparent barrier height value that Petitioner relies upon (“about 0.33 eV”) will be a different higher value, so the actual value of the barrier height is uncertain. Accordingly, we do not find that Petitioner has met its burden to sufficiently demonstrate that a person of ordinary skill in the art would have understood Soukup to teach or suggest the claimed range of limitation 1[e] in that there is insufficient evidence presented that supports that the selected Soukup barrier height value represents an accurate value.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,319,263 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01386 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 28–29 (citing Ex. 1024 ¶ 25). Petitioner further states that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa” and that “[t]his level of ordinary skill would be the same if the relevant time period were around the March 12, 2004 or October 28, 2004 Japanese priority applications, or the March 10, 2005 PCT filing date.” Id. at 29 (citing Ex. 1024 ¶¶ 24–25). Patent Owner states that “[f]or purposes of this Preliminary Patent Owner Response only, Patent Owner does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition because the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 20 (citing Pet. 28–29). To resolve the institution question, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claims using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b). Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 25. Patent Owner does not directly” slip op. at 7
- BurdenNot shown unpatentable
“Thus, the cited teachings of Sunai support Patent Owner’s position that, even if adding boron into a ferromagnetic layer of CoFe results in a higher TMR as taught by Sunai, the addition suppresses crystallization. As to the issue of the teaching of the BCC structure of the alloy, not only does Petitioner’s challenge applying Bowen and Sunai fail to demonstrate a teaching or even a suggestion of a CoFeB alloy with a BCC cited by Petitioner does not either. Only one of Petitioner’s cited pieces of underlying evidence refers to a BCC lattice structure, Parkin, but Parkin’s BCC structure is disclosed with respect to a CoFe layer, and not a CoFeB layer. Ex. 1062, 18:55–59 (“The simple cubic crystalline MgO layer thus provides a template for the formation of a thin crystalline ferromagnetic layer which has the bcc structure of CoFe and is oriented in the same (100) direction as the MgO layer.” (emphasis added)).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,608,198 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Staton Techiya, LLCInstitution deniedPTAB · Jan 3, 2023 · IPR2022-01099 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution on all challenged claims because none of the three obviousness ground groups sufficiently showed the claimed microphone-port limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response 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.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denialNot reached
“deny institution under 35 U.S.C. § 314(a). Pet. 66–69; Prelim. Resp. 19–27; Prelim. Reply 1–5; Prelim. Sur-reply 1–3. For the reasons discussed in Sections III.E, III.F, and III.G, we deny institution on the merits of Petitioner’s challenges and as such, do not address the parties’ arguments regarding the issue of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 10
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art at the time of the alleged invention of the ’666 patent (“POSITA”), which for purposes of this proceeding is no earlier than January 22, 2007, would have had a bachelor’s degree in electrical engineering, computer science, or a similar field and two years of experience in the design of digital audio systems and associated signal processing. The POSITA could have also obtained similar knowledge and experience through other means. Pet. 11 (citing Ex. 1002 ¶ 20). Patent Owner “applies the level of ordinary skill in the art that is proposed in the Petition.” Prelim. Resp. 11. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’666 patent and asserted prior art of record.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In grounds 1B and 1C, Petitioner does not cite Kvaløy or Inanaga to cure the deficiencies of Platz in ground 1A. Instead, Petitioner impermissibly relies on unsupported expert testimony to supply a limitation missing from Platz. Dr. Polish’s testimony is not supported because none of the cited references or cited underlying evidence (i.e., Svean) teaches, suggests, or even mentions a port.” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,244,666
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.