- PTAB · Dec 16, 2025 · IPR2025-01046 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 2–15, finding a reasonable likelihood that the 1946 Cyclopedia, Lindström, and Wong render at least claim 2 obvious; claim 1 was disclaimed.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that Petitioner’s proposed level of ordinary skill in the art is incorrect, “because design or analysis experience with other industrial wheeled vehicles would not necessarily be applicable to the art of the ’892 Patent.” Prelim. Resp. 12 (citing Ex. 2035 ¶¶ 38–39). According to Patent Owner, a person of ordinary skill in the art “would have at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years of experience designing or analyzing rail cars.” Id. (citing Ex. 2035 ¶¶ 34, 38). The parties agree that one of ordinary skill in the art “would have had at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years 5 Because Patent Owner statutorily disclaimed claim 1, this ground is moot. Patent Owner, however, disagrees that the experience should include designing or analyzing “similar vehicles.” Prelim. Resp. 12. At this stage, for the reasons below, limiting the ordinary skill in the art to “at least two years of experience designing or analyzing rail cars” does not affect our analysis of the parties’ dispute or our determination that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Thus, based on the preliminary record, we adopt Petitioner’s proposed level of ordinary skill to determine whether review should be instituted.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge would not.” Prelim. Resp. 12–13 (citing Ex. 2035 ¶ 39). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we need not construe expressly any claim term to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. 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 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“been obvious over the 1946 Cyclopedia and Wong. Weighing the parties’ arguments and evidence, we find Petitioner provides sufficient rational underpinning for its assertion that it would have been obvious in view of Wong to implement a cross-wise extending beam to reinforce the 1946 Cyclopedia’s NSC ore car’s end slope sheet. Pet. 52–53; Prelim. Resp. 28– 30. In response to Petitioner’s assertion that “[t]he upper, outboard end of [Wong’s slope sheet 26] is reinforced by a cross-wise, L-shaped beam positioned under the slope sheet,” Patent Owner argues that “Wong does not provide reinforcement, but simply shows two sheets being connected for lading containment and load transfer.” Pet. 52; Prelim. Resp. 29. At this stage, we find Petitioner has the better position. Although we agree with Patent Owner that Wong shows two sheets connected to one another, that does not negate Petitioner’s correct observation that Wong shows an upper end of its end slope sheet 26 resting on an L-shaped structure, which apparently would reinforce end slope sheet. Pet. 52; Ex. 1003 ¶ 56. reason to look to Wong in the first place,” we again find that Petitioner has the better position at this stage. Prelim. Resp. 29. For example, Wong’s disclosure of “hopper railcar 10” (Ex. 1006, 3:6–9) and the 1946 Cyclopedia’s disclosure of “Freight Cars: Hopper Ore” (Ex. 1004, 27–28; Ex. 1054, 27–28) support Petitioner’s position that “Wong and the 1946 Cyclopedia are in the same field.” Pet. 52; see also id. at 76 (“Wong discloses a rail road hopper car (‘hopper railcar’ 10)”), 18–19 (“The ore-car section of the 1946 Cyclopedia—entitled ‘Freight Cars: Hopper Ore’— contains drawings and a photograph of an ore car manufactured by Patent Owner NSC.”); Ex. 1003 ¶ 56 (“Wong and the 1946 Cyclopedia are in the same field of hopper railcars”) (citing Ex. 1004, 27–28; Ex. 1006, code [57]). This position is not persuasively rebutted by Patent Owner’s argument that Wong’s hopper railcar 10 uses aluminum and steel together for certain reasons. Prelim. Resp. 28–29.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,166,892 - PTAB · Dec 16, 2025 · IPR2025-01047 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–44 on all presented challenges, finding a reasonable likelihood that FreightCar would prevail on at least one claim based on Hart, the 1906 Cyclopedia, and Wong.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–44 of the ’515 patent on all presented challenges. 37 C.F.R. § 42.108(a) (2024) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that one of ordinary skill in the art “would have had at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years of experience designing or analyzing rail cars.” Pet. 29; Prelim. Resp. 9. Patent Owner, however, disagrees that the experience should include designing or analyzing “similar vehicles.” Prelim. Resp. 9. At this stage, for the reasons below, limiting the ordinary skill in the art to “at least two years of experience designing or analyzing rail cars” does not affect our analysis of the parties’ dispute or our determination that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Thus, based on the preliminary record, we adopt Petitioner’s proposed level of ordinary skill to determine whether review should be instituted. Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge of rail cars would not.” Prelim. Resp. 9–10 (citing Ex. 2035 ¶ 35). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge of rail cars would not.” Prelim. Resp. 9–10 (citing Ex. 2035 ¶ 35). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to further support the upper, outboard end of the slope sheet with a crosswise, L-shaped beam as in Wong,” and one of ordinary skill in the art would have been motivated to do so, because of “the benefits of reinforcing the slope sheet at its upper end, where its connection with another structure creates a stress concentration.” Pet. 63 (citing Ex. 1003 ¶ 108). Petitioner points to Hart’s transverse beam b3 and argues that it suggests using a transverse beam like Wong if Hart is modified so that upper beam b3 no longer supports the slope sheet. Id. (citing Ex. 1008, Fig. 1). Petitioner also argues that the references are in the same field and that there would have been a reasonable expectation of success. Id. at 63–64 (citing Ex. 1003 ¶ 108; Ex. 1008, Fig. 1). Based on the preliminary record, Petitioner shows that its proposed combination of Hart, the 1906 Cyclopedia, and Wong teaches or suggests the above-quoted limitations of claim 24 and that one of ordinary skill in the art would have combined those references in the manner asserted with a reasonable expectation of success.” slip op. at 19
§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,132,515 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 8, 2025 · IPR2025-00897 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim966 combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). An inter partes review may be instituted if “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). Upon consideration of the papers, we determine that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’527 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’527 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” and that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Pet. 12 (citing Ex. 1003 ¶¶ 40–43). Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 3–4. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 12. We view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. At this stage, Patent Owner agrees that no terms need construction. Prelim. Resp. 3. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“discloses the preamble and the remaining limitations of claim 1. Pet. 38–64. Petitioner identifies where the combination of Kim, Dahlman, and Kim966 teaches these limitations, supported with testimony from Dr. Mandayam, which Patent Owner does not specifically rebut at this stage. We determine, on this record, that the combination of Kim, Dahlman, and Kim966 teaches the preamble (whether or not limiting) and the remaining undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). We also find that Petitioner has provided sufficiently articulated reasoning, which Patent Owner does not specifically address at this stage, to support combining Kim, Dahlman, and Kim966’s teachings in the manner Petitioner does. Pet. 21–38. 3. Summary In summary, based on the current record, we determine that Petitioner shows a reasonable likelihood that the combination of Kim, Dahlman, and Kim966 renders claim 1 obvious.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,944,527 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 5, 2025 · IPR2025-00903 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim-966 combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’110 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“966 renders obvious this limitation. See Pet. 50–53. With respect to the “first signaling,” Petitioner argues that the combination teaches “the UE [user equipment] receiving a ‘system information block (‘SIB’) (a first signaling) which can include various types of information such as ‘information about the allocation of subframes to uplink/downlink and configuration of the special subframe in the case of TDD [time division duplexing].” Id. at 43 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 21, 65; Ex. 1003 ¶ 100). Petitioner argues that “[b]ecause the SIB assigns time resources or an ‘allocation of subframes for uplink/downlink,’ an SIB would be understood to function as and render obvious as assigning the UE a collection of time intervals (e.g., subframes) or ‘time resource pools.’” Id. at 51 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 60–61, 64–78, 84; Ex. 1003 ¶ 113). Petitioner contends that “a POSITA would have understood and found obvious that the first signaling (SIB) is used to determine an ‘allocation of subframes to uplink/downlink’ (a first time resource pool) through an assignment of a Time Division Duplexing (TDD) configuration.” Id. (citing Ex. 1003 ¶ 113). Petitioner submits that “[t]he TDD configuration would identify a series of subframes available for uplink and downlink (a first time” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 2. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Mandayam, Petitioner contends that an ordinarily skilled artisan for the ’110 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 12. Petitioner additionally contends “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’110 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,546,110 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00905 · APJ Scott A Daniels · IPR · Institution
The Board instituted review of claims 1–5, 7–11, 13–17, and 19–23 on all asserted grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’581 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party proposes any claim constructions at this stage. Pet. 19– 20; Prelim. Resp. 2. Where there is no dispute we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“c) Conclusion as to Independent Claim 1 We have considered and find persuasive, at this stage, Petitioner’s arguments and supporting evidence as set forth at pages 31–45 of the Petition with respect to the remaining limitations [1pre]–[1f] and [1i]. Patent Owner does not contest Petitioner’s arguments as to these remaining limitations. Also, Dr. Ding’s testimony is currently unrebutted. Accordingly, we determine that Petitioner has shown a reasonable likelihood that Yeo alone, or the combined teachings of Yeo and TS36 render independent claim 1 obvious.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,917,581 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00894 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’767 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“under 112(f) pointing out the respective functions and structure disclosed in the ’767 patent specification. Pet. 18–20. Patent Owner does not dispute the construction of these terms, stating only “that claim construction is not required to resolve any issues.” PO Resp. 2 (citing Pet. 18–20). Where there is no dispute and our Decision does not turn on any particular construction of these terms, we need not decide at this point whether “receiver module” and “transmitter module” invoke means-plus-function under 112(f). Pet. 13; Prelim. Resp. 5. And, because there is no dispute, we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. 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” slip op. at 10
- BurdenInstituted
“In an [inter partes review], 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 1889, 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”)). 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
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,462,767 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00904 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 would be obvious over Kim and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology. . . . Additional years of experience could substitute for an advanced-level degree (and vice versa). Pet. 4 (citing Ex. 1003 ¶¶ 10, 16, 29–32). Patent Owner relies on Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill at this stage.” slip op. at 8
- BurdenInstituted
“In an [inter partes review], 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 1889, 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”)). 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Currently, Petitioner has presented evidence that PUSCH and PUCCH uplink channels were known in Kim to be used for transmitting data, e.g., control information as to channel estimation for demodulation from the UE to the base station. Pet. 40 (citing, e.g., Ex. 1004 ¶ 55). And, on the record before us, Dr. Akl’s testimony is unrebutted that a person of skill in the art would have understood that for other information, such as the UE’s CSI-RS measurement report, “the PUSCH and PUCCH channels present ready-to- station.” Ex. 1003 ¶ 123. Given such evidence, at this early stage of the proceeding Petitioner has shown a reasonable likelihood that a person of ordinary skill in the art would have known to use the PUSCH and PUCCH channels for also transmitting the CSI-RS measurement report to the base station as required by limitation [1.d10].” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,626,904 - PTAB · Nov 6, 2025 · IPR2025-00820 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–11 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Tadros, Porter, Kalili, and Texin 990R.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–11 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 17–18 (citing Ex. 1007 ¶¶ 13–15). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’090 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 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)). Both parties indicate that no claim terms need to be expressly construed. Pet. 29–30; Prelim. Resp. 5. Consistent with that, we determine that we need not construe any claim terms expressly in order to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Weighing the parties’ arguments and evidence, we find Petitioner’s arguments and evidence sufficient at this stage to demonstrate a reasonable likelihood of prevailing. Pet. 8–17, 30–49. For example, regarding whether of Porter’s disclosure to the problem faced by inventor of the ’090 patent. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 144–164. The ’090 patent illustrates that its inventor faced the problem of selecting desirable materials for an aligner, including selecting a desirable material for an aligner’s hard layer. Ex. 1001, 5:44–59. Petitioner and Dr. Osswald provide significant evidence and reasoning tending to show that Porter’s discussion of Tritan logically would have commended itself to the attention of an inventor facing the problem of selecting an aligner hard layer. Pet. 8 (citing Ex. 1007 ¶¶ 98–108, 125–127, 144–164). For example, Dr. Osswald explains that “because Tritan copolyesters are BPA-free, Rafih specifically discloses Tritan EX401 as an exemplary material” for its oral appliance. Id. ¶ 99 (citing Ex. 1104, 5:4–64, claims 2, 9, 10). In view of this, Dr. Osswald testifies that “Rafih would inform a [person of ordinary skill in the art] that Porter’s guidance regarding replacing polycarbonate with Tritan applies to dental appliances.” Ex. 1007 ¶ 146. At this stage, weighing Petitioner’s evidence against Patent Owner’s contrary attorney argument that Porter focuses on dishware, we determine Petitioner has shown sufficiently that Porter is analogous art. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 144–164; Prelim. Resp. 1, 9–10, 18–21.” slip op. at 11
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,648,090 - PTAB · Nov 6, 2025 · IPR2025-00821 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–23, 25, and 26 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Tadros, Porter, Kalili, and Texin 990R.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–23, 25, and 26 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 17 (citing Ex. 1007 ¶¶ 13–15). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’090 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party indicates that we need to construe expressly any claim terms. Pet. 27–28; Prelim. Resp. 5. Consistent with that, we determine that we need not construe any claim terms expressly in order to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“arguments and evidence sufficient at this stage to demonstrate a reasonable likelihood of prevailing. Pet. 8–17, 53–71. For example, regarding whether Porter is analogous art, Petitioner sufficiently shows reasonable pertinence of Porter’s disclosure to the problem faced by inventor of the ’091 patent. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 146–165. The ’091 patent illustrates that its inventor faced the problem of selecting desirable materials for an aligner, including selecting a desirable material for an aligner’s hard layer. Ex. 1001, 5:44–59. Petitioner and Dr. Osswald provide significant evidence and reasoning tending to show that Porter’s discussion of Tritan logically would have commended itself to the attention of an inventor facing the problem of selecting an aligner hard layer. Pet. 8 (citing Ex. 1007 “because Tritan copolyesters are BPA-free, Rafih specifically discloses Tritan EX401 as an exemplary material” for its oral appliance. Id. ¶ 99 (citing Ex. 1104, 5:4–64, claims 2, 9, 10). In view of this, Dr. Osswald testifies that “Rafih would inform a [person of ordinary skill in the art] that Porter’s guidance regarding replacing polycarbonate with Tritan applies to dental appliances.” Ex. 1007 ¶ 147. At this stage, weighing Petitioner’s evidence against Patent Owner’s countervailing attorney argument that Porter focuses on dishware, we determine Petitioner has shown sufficiently that Porter is analogous art. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 146–165; Prelim. Resp. 1–2, 9–10, 34–36.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,648,091 - PTAB · Nov 6, 2025 · IPR2025-00819 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims based on both obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of Tadros, Kalili, and Texin 990R to meet the limitations of the claims challenged under this ground.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a four-year undergraduate degree in materials science, mechanical engineering, chemical engineering, or a related field and at least two years of experience in the field of polymer science, combined with at least two years of experience in the field of design, manufacture, and processing of thermoformable polymer sheets for use in various applications, such as in orthodontic and dental appliances. Additional education could substitute for professional experience and vice versa. Pet. 18–19 (citing Ex. 1007 ¶¶ 13–15). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no claim term requires express construction.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of Tadros, Kalili, and Texin 990R to meet the limitations of the claims challenged under this ground. We disagree that Petitioner fails to meet its burden as to the motivation to combine arguments. Petitioner persuasively maps the limitations of the challenged claims to portions of the references relied upon. Pet. 28–38 (claim 1), 38–51. Petitioner also, on this record, provides adequate statements of motivation to combine with a reasonable expectation of success. See, e.g., id. at 34–36 (citing Ex. 1007 ¶¶ 31, 39–42, 147–151, 174–176). The Petition’s reliance on supporting testimony and related corroborating evidence to support the combination does not amount to impermissible hindsight, as that testimony takes into account “knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Without further clarification or support from Patent Owner, and in the absence of testimony to support the assertion that a POSITA would not have combined the cited references in the manner proposed with a reasonable expectation of success, we are unpersuaded by Patent Owner’s arguments in this regard.” slip op. at 14
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,154,384
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.