• Alliance Laundry Systems, LLC v. Payrange LLCInstitution denied
  PTAB · Oct 1, 2025 · IPR2025-00573 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood that claims 7 or 11 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “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.” After considering the Petition, the Preliminary Response, 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 ’772 patent. Accordingly, we do not institute an inter partes review of claims 7 and 11 of the ’772 patent on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends a person having ordinary skill in the art (“POSA”) pertaining to the ’772 patent “would have had an educational background of, engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 19–20; Ex. 1003 ¶¶ 20–26. “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’772 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

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

    “In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 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 expressly to determine whether or not to institute a trial. 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))).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,481,772
• Hesai Technology Co. Ltd. / Hesai Group et al. v. Ouster, Inc.Other
  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 · Graham
  Patents in suitUS 11,422,236
• Giesecke+devrient GmbH v. Lumenco, LLCInstitution denied
  PTAB · Nov 25, 2024 · IPR2024-00837 · APJ Benjamin D M Wood · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–7, and 9–13 were obvious over any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “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). Upon considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1, 3–7, and 9–13 of the ’691 patent.” slip op. at 2

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

    “We agree with Patent Owner’s reading of limitation [1d]. This limitation requires that each set of micro mirrors has a differing cone angle offset. A claim requiring “each” of an item to have a particular structure requires all instances of the item to have that structure. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (claim reciting that “each wire leg” have an offset is not satisfied by prior-art device in which not all of its wire legs have an offset); cf. Micron Tech., Inc. v. U.S., 243 F.3d 1301, 1308 (Fed. Cir. 2001) (“The use of the words ‘each’ and ‘any’ to modify ‘employee . . . leaves no doubt as to the Congressional intention to include all employees within the scope of the [Fair Labor Standards] Act unless specifically excluded.”) (quoting U.S. v. Rosenwasser, 323 U.S. 360, 362–63 (1945)); ResQNet.com v. Lansa, Inc., 346 F.3d 1374, 1379 (Fed. Cir. 2003) (excerpt in specification using words “each field” and “fields” refers to all, not just some, fields). Thus, for each set of micro mirrors providing the pixels for each image to have a “differing cone angle offset,” the cone angle offsets of all the sets of micro mirrors must differ from each other. Consequently, as Patent Owner states (Prelim. Resp. 12), a set of micromirrors producing a pixel for a first image must have a cone angle offset that is different from the other sets of micromirrors producing pixels for that image, and also different from the sets of micromirrors producing pixels for any other image. Petitioner has not made us aware of anything in the Specification that suggests otherwise. We are not persuaded that Fuhse262 teaches limitation [1d] under this interpretation. Petitioner has not identified, and we are unable to find, any teaching in Fuhse262 that each set of micro mirrors providing the pixels for each of the differing ones of the images has a differing cone angle offset from those of the other sets of micro mirrors. Petitioner asserts instead that “a POSITA would understand that there is a differing cone angle offset for each image because the surface normal of each image, which dictate the cone of reflected rays and cone axis, are required to be different.” Pet. 41. But this assertion suggests, at most, that the sets of micro mirrors that create pixels for a first image have different cone angle offsets than the sets of micro mirrors that create pixels for a second image; Petitioner does not appear to be asserting that, e.g., all the sets of micro mirrors creating pixels for the first image are also different from each other, as limitation [1d] requires. Because we are not persuaded that Fuhse262 teaches limitation [1d], we are not persuaded that Petitioner has a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Fuhse262 and Fuhse925.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the art “would have had a minimum of an undergraduate degree in electrical engineering, mechanical engineering, or physics and at least 2 years of experience in micro-optic based security features.” Pet. 14 (citing Ex. 1003 ¶¶ 12–13). Patent Owner responds that one of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, mechanical engineering, physics, or a similar field and at least 2 years of experience in micro-optic based security features.” Prelim. Resp. 10. We do not discern a meaningful difference between the parties’ positions, and do not believe that our decision would differ under either definition. Nonetheless, at this stage of the proceeding, we adopt Petitioner’s definition. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 9

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

    “The parties agree that no terms require construction. Pet. 15; Prelim. Resp. 10. We also do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,317,691
• Zhejiang Lingdi Digital Technology Co., Ltd. v. Clo Virtual Fashion, IncInstitution denied
  PTAB · Oct 25, 2024 · IPR2024-00970 · APJ William V Saindon · IPR · Institution

  Institution was denied for claims 1–11 because the petition did not sufficiently explain why a skilled artisan would combine TUKATECH’s features with EZBRUSH.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the 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”)); 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 claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . 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 skill in the art; and (4) when in evidence, objective evidence of non-obviousness, i.e., secondary considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5

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

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert 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); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. 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”).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Petitioner’s expert provides no citation for his “smooth seam” or “pleated or ruffled effect at the seam” rationales. Indeed, Petitioner’s expert does not indicate that he has expertise regarding clothing, let alone seam formation on clothing. Ex. 1003 ¶¶ 3–13. As our Rules make clear, “[e]xpert 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); see also Sundance, Inc. v. DeMonte Fab. Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008) (“Testimony proffered by a witness lacking the relevant technical expertise fails the standard of admissibility under Fed. R. Evid. 702.”). Petitioner’s expert does not cite evidence in support of his statements, nor does he provide evidence that he has a background that indicates that he would intrinsically know such things to be true. On this record, we afford Petitioner’s expert’s testimony on the “length selection” rationales for providing a “smooth seam” and/or “pleated or ruffled effect at the seam” no weight. Ex. 1003 ¶ 61. For this reason, Petitioner’s obviousness position is untenable. 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”). Similarly, Petitioner asserts that adding “TUKATECH’s suggested techniques” to EZBRUSH “would be merely the application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43 (citing Ex. 1003 ¶ 62). Petitioner asserts that a person of ordinary skill in the art “would have recognized that applying the suggested user interface improvement from TUKATECH to EZBRUSH’s CAD system would have led to predictable and helpful results with a reasonable expectation of success.” Id. (citing Ex. 1003 ¶ 62). Similar to the discussion above, we have reviewed the cited paragraph of Petitioner’s expert’s declaration and find insufficient credible evidence supporting Petitioner’s naked assertions regarding what was an “application of known techniques to a known system ready for improvement to yield predictable results.” Pet. 43; Ex. 1003 ¶ 62. To the extent Petitioner is arguing that obviousness can be established merely by showing that EZBRUSH and TUKATECH are in the same field of endeavor (e.g., Pet. 43 (“both [are] directed toward CAD systems”)), we disagree. We are not aware of any authority supporting such an argument. Petitioner has not sufficiently explained why or how it would have been obvious to apply the length comparison information from the table of TUKATECH’s size reshaping feature to EZBRUSH in a manner that meets each step of the claim. Thus, Petitioner’s additional reasons for modifying EZBRUSH to implement TUKATECH’s sizing table are also untenable.” slip op. at 10

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

    “C. Claim Construction Under 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). That is, “the words of a claim ‘are generally given their ordinary and customary meaning’ . . . that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1312–13. We do not need to construe any claim terms to reach a decision in this proceeding. Realtime, 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 7

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,733,773
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Oct 10, 2024 · IPR2024-00040 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable, principally because Orr’s trigger circuit was not shown to be a processor.

  RulingsInstitution decision

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

    “patent. The term processor appears only once in the entire Specification.11 That passage in the Specification states: The inertial sensor 23 could be an accelerometer with embedded power processing capabilities and which is always powered on in the first low power mode. The embedded power processing capabilities comprise a processor or other processing means for executing programmable software code for analysing the accelerations values delivered by the accelerometer, and for generating signals or values when certain conditions are met. Ex. 1001, 6:15–22 (emphasis added). We read the phrase “for executing programmable software code” as referring back to both the “processor” and the “other processing means.” The disjunctive “or” between “processor” and “other processing means” binds the two together as the subject being addressed. Accordingly, we know from the Specification’s only disclosure of the term, that a “processor” in an inertial sensor has a structure that is configured to execute programmable software code.12” slip op. at 16

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyOther

    “Neither party suggests that “processor” invokes 35 U.S.C. § 112, paragraph 6. Nor do we so find. Thus, the Halliburton Rule against functional claiming still applies to “processor” and we do not construe that term to cover any structure which performs the recited function of “discriminating between gesture and no gesture based on a direction of said acceleration signal as measured by said accelerometer being a three dimensional accelerometer and on a slope or frequency of said acceleration signal.”” slip op. at 15

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

    “First, Petitioner has not asserted, much less demonstrated, that only a processor, and nothing else, can be used to detect a specific gesture, detect each component of the gesture, and analyze each component to determine whether a gesture has been properly formed. Although a processor may perform those functions, the record is inadequate to show, even for institution purposes, that only a processor, nothing but a processor, can perform those functions and that one of ordinary skill in the art would have so recognized. Thus, the fact that trigger circuit 38 detects a specific gesture, detects each component of the gesture, and analyzes each component to determine whether the gesture has been properly formed, does not make trigger circuit 38 a processor. Further, nothing indicates trigger circuit 38 is configured to execute programmable code. Second, that there are processors elsewhere in the system but in sleep mode at the time the inertial sensor operates does not persuade us that trigger circuit 38 itself must be a processor. This argument assumes, without supporting evidence and explanation, the stated functions of the trigger circuit can only be performed by a processor. Again, nothing indicates that trigger circuit 38 is configured to execute programmable code. Third, Petitioner has not explained the presence of switch 41 and comparator 46 within trigger circuit 38, neither one of which, on this record, is shown as having anything to do with execution of programmable code. Fourth, Orr describes that Main Accelerometer Sub-sys 42 in trigger circuit 38 includes a second motion sensor which is activated by a signal from switch 41 and which provides output signal 44 to threshold comparator 46. Ex. 1005, 7:3–17. Petitioner has not adequately explained the presence of this second motion sensor within Main Accelerometer Sub-sys 42. On this record, a motion sensor, such as the second motion sensor in Main Accelerometer Sub-sys 42, has not been shown to have anything to do with execution of programmable code. For all of the foregoing reasons, Petitioner has not adequately accounted for limitations 14[E][1] and 14[E][3]. In short, trigger circuit 38 is not configured to execute programmable code and so has not been shown to teach or suggest the processor limitation. Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Orr and Orr682.” slip op. at 24

  • 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). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, and consistent with the Director’s remand instructions, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’678 patent. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’678 patent. B.” slip op. at 3

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,804,678
• Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution denied
  PTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.

  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). 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.” 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) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16

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

    “According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,204,134
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Apr 9, 2024 · IPR2024-00041 · APJ St John Courtenay III · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under 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) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’085 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (POSITA). In assessing 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) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.” slip op. at 10

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

    “We disagree with Petitioner, Dr. Bederson, and Patent Owner on this point, because at least one of their disputes centers on the meaning of first and second power modes. We again emphasize that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (emphasis added). Here, in its Petition and Dr. Bederson’s supporting declaration (Ex. 1002 ¶ 123)), neither Petitioner nor Dr. Bederson has proposed any claim construction for the claim 1 terms “first power mode” and “second power mode.” See 37 C.F.R. § 42.104(b)(3) (the petition must set forth “how the challenged claim is to be construed.”). However, on this record, we determine the claim 1 terms “first power mode” and “second power mode” require explicit claim construction as a principal threshold issue in our institution decision. And Petitioner has not done so.” slip op. at 16

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

    “than two power modes can be provided” (Ex. 1001, 5:58–59), for purposes of our claim construction in deciding whether institute an inter partes review, we focus on the corresponding supporting descriptions supra of the first and second power modes. As described within the ’085 patent, switching between first and second power modes seems to generally require switching physical components, e.g., electrodes, on or off as needed to conserve power. The conservation of power comes from a device being ready or not ready, set or not set, to perform a function, rather than actually performing or not performing a function. Petitioner has the burden to show how the first and second power modes of claim 1 of the ’085 patent might be alternatively interpreted as modes involving different power usage levels due to the selective usage of applications available for use, instead of different power usage levels due to switching physical components on or off, rendering them available or unavailable for use, consistent with the many supporting descriptions found in the ’085 patent, as reproduced above.” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,198,085
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution denied
  PTAB · Apr 5, 2024 · IPR2024-00002 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–24 unpatentable, principally because the asserted combinations did not establish the required full-display card replacement limitations.

  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) (2023). 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.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’922 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and 2-3 years of experience in the research, design, development, or testing of graphical user interfaces, touchscreens, and mobile devices, with additional education substituting for the experience and vice-versa.” slip op. at 9

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

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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))). Petitioner asserts that “Petitioner does not believe any term requires construction.” Pet. 6. Patent Owner asserts that it “believes that claim construction is not required to resolve any issues.” Prelim. Resp. 7. We agree that on this record it is not necessary to conduct express claim construction for any term. C.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner adds: “It would have been obvious to apply the same teaching to Figure 5B and to a wearable device such as a watch,” referring to Louch’s description in paragraph 67 that widget 402 “can consume the entire display area 406 or a portion thereof.” Pet. 21 (citing Ex. 1002 ¶¶ 51–59, 116). No reasoning or rationale, however, is provided in the Petition for sizing the scrolling widgets to fill the whole or entirety of the display. Only a conclusory statement of obviousness is provided in the footnote. We have reviewed each of the cited paragraphs in Dr. Bederson’s Declaration and could find nothing supportive in that regard in any of cited paragraphs 51–59 for Petitioner’s conclusory statement about sizing the scrolling widgets to the whole or entirety of the display. There is one sentence in the last cited paragraph, paragraph 116 of Dr. Bederson’s Declaration, which provides a reasoning for sizing the scrolling widgets to be the whole or entirety of the display. However, we decline to consider it, because “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Also, embedding reasoning in the expert’s Declaration and not expressly stating the same in the Petition fail to give Patent Owner adequate notice to respond. Patent Owner did not respond to this extraneous argument, improperly incorporated by reference from Dr. Bederson’s Declaration into the Petition.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,651,922
• Hesai Technology Co. Ltd. / Hesai Group et al. v. Ouster, Inc.Institution denied
  PTAB · Mar 28, 2024 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, including under the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an IPR, the petitioner has the burden from the 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”)); 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). slip op. at 8

  • Skill levelSkill level petitioner adoptedOther

    “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 9

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

    “In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 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 10

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

    “On this record, we agree with Patent Owner. With respect to Figure 22, Hall states: As shown in FIG. 22, behind each of the lenses in the cavity 174, are 16 laser emitters organized relatively horizontally, thereby combining for 32 total emitters. Behind the lens of the cavity 170 are 32 detectors that are positioned within a tube 176 of the unit 154. Ex. 1004, 6:67–7:5. Thus, Hall’s specification describes 32 detectors as being behind the lens of cavity 170. But, Annotated Figure 22 depicts 36 dark red circles, which does not match the 32 detectors described in Hall’s specification. Petitioner does not explain this discrepancy in the Petition. Petitioner cites to Dr. Hesselink’s testimony to support its assumption that Annotated Figure 22 shows the claimed arrangement of pixel columns. Pet. 20. Dr. Hesselink’s testimony is conclusory and deficient because it does not sufficiently explain why a POSITA would know the dark red circles in Annotated Figure 22 were the detectors. Ex. 1003, 65–66 (claim chart); see also id. ¶¶ 72–73. Petitioner next argues: “To the extent [Patent Owner] contends Hall does not disclose horizontal and vertical offset pixels, a POSITA would have found it obvious to arrange the pixels in this manner.” Pet. 21 (citing Ex. 1003 ¶¶ 30–36, 66–17). Petitioner’s only support for this argument is the testimony of Dr. Hesselink. Pet. 21. Petitioner, thus, attempts to substitute the testimony of Dr. Hesselink to teach the claimed arrangement of pixels. But, as explained in our Consolidated Trial Practice Guide2 (November 2019) at 36: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis . . . . [I]n an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. Petitioner does not rely upon Borowski to teach the claimed arrangement of pixels. See generally Pet. 20–21. Because Petitioner fails to show sufficiently that the combination of Hall and Borowski teaches the arrangement of pixels recited by claim 1, we determine that Petitioner has not met its burden to show that claim 1 would have been obvious over Hall and Borowski.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,422,236
• Sram, LLC v. Fox Factory, Inc.Institution denied
  PTAB · Feb 21, 2024 · IPR2023-01302 · APJ Frances L Ippolito · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–8 unpatentable under any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). 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).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 2, n.1 (citing Ex. 1102 ¶ 33; Ex. 1103 ¶ 29). Patent Owner does not dispute Petitioner’s proposed definition. See generally, Prelim. Resp. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9

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

    “Petitioner contends that claim construction is not necessary. Pet.7. Nonetheless, Petitioner contends that because of prosecution history disclaimer, the claim term “air bleed assembly” should be construed to be “located between the lower leg seal and the upper bushing.” Id. Patent Owner contends that this claim term should be accorded its plain and ordinary meaning. Prelim. Resp. 13. In particular, Petitioner argues that “[t]he claim language itself makes it clear that the ‘air bleed assembly’ is located on the lower fork between the lower leg seal and a resting level of the oil bath in the lower fork.” Id. (citing Ex. 1101, 4:56– 5:4). We note that Petitioner acknowledges that “claim construction is not necessary because the claims of the ‘331 patent are invalid in view of the prior art regardless of whether Fox’s prosecution history disclaimer on the position of the “air bleed assembly” is included in the claim construction.” Pet. 7. Based on our review of the parties’ arguments and evidence, no” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Here, we understand Kashima to teach that when setscrew 6 is opened to release air in the clearance, oil is also released through the same opening. Ex. 1105 ¶ 4. In other words, the distance between setscrew 6 and the oil bath lubrication does not prevent the leakage of oil from the lower tube. Rather, setscrew 6 must be closed to prevent the oil from leaking and continuing to leak from the inside of outer tube 1. Indeed, Petitioner acknowledges the same. Petitioner asserts that “most if not all of the oil bath lubrication remains within the lower fork 1 because the valve is near the top of the lower fork 1 and can be closed once any oil begins to leak.” Pet. 26– 27 (citing Ex. 1105 ¶ 4). Here, Petitioner acknowledges that it is the closing of the setscrew that stops the oil leakage. However, claim 1 requires that the fluid passage and manually operable valve “are located at a distance from an oil bath lubrication within said lower fork, such that when said manually operable valve is in said second position, most, if not all of said oil bath lubrication remains within said lower fork[.]” Ex. 1001, 5:2–7 (emphases added).” slip op. at 21

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,739,331

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.