- PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must 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 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations 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) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · May 23, 2025 · IPR2025-00050 · APJ Iftikhar Ahmed · IPR · Institution
Instituted IPR of claims 1–3 and 5 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Walker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 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.” For the reasons that follow, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of claims 1–3 and 5. Accordingly, we institute an inter partes review of those claims. We do not address claims 4 and 6–13 because Patent Owner disclaimed those claims. See Exs. 2001, 2008; Prelim. Resp. 30; Supp. Prelim. Resp. 3.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Jury trial in the Related Litigation is currently scheduled to begin on June 22, 2026. Ex. 1008, 16. The statutory deadline for issuing a Final Written Decision predates the trial by approximately one month. Patent Owner argues that Petitioner was not diligent in filing the Petition, and this factor favors discretionary denial. Supp. Prelim. Resp. 2. Petitioner argues that Factor 2 favors institution because that Final Written Decision date precedes the scheduled trial date and also because based on the median time to trial for Judge Noreika, the judge presiding over the Related Litigation, the anticipated trial date would be in December 2026. Pet. Supp. Resp. 2. Petitioner also points out that even based on the median time to trial in the District of Delaware, the trial in the Related Litigation would occur in October 2026. Id.; Pet. 72. We agree with Petitioner that based on median time-to-trial statistics for the District of Delaware and for Judge Noreika, the Final Written Decision in this proceeding would issue a few months before the anticipated trial date and a month before the currently scheduled trial date. Exs. 1007, 1012. This factor therefore weighs against exercising our discretion to deny institution.5” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Walker discloses that during normal television viewing, a broadcast program is provided to and displayed on an interactive television system and a streaming version of the broadcast program is provided to a television distribution facility in advance of the broadcast. Ex. 1005 ¶ 10. Walker explains that if a user requests a playback control function, the interactive television system may switch from displaying the broadcast television program to the streaming version of the program. Id. When switching, the system may switch to displaying the streaming version of the program at the same point in time in the program that the user was viewing in the broadcast program. Id.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner contends that “[b]ecause the asserted prior art discloses embodiments within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims.” Pet. 3. Petitioner lists several terms and proffers its position on the plain and ordinary meaning of those terms. Id. at 4–6. Patent Owner does not challenge Petitioner’s claim construction positions. Prelim. Resp. 5. For purposes of this Decision, we determine that no term requires express construction.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,880,592 - PTAB · Apr 29, 2025 · IPR2025-00180 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Comcast would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. Petitioner has complied with our guidance by filing a statement ranking the petitions. See Practice Guide, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2025-00181 and IPR2025- meaning does not resolve the parties’ dispute.”). Claim construction arguments should not be relegated to patentability arguments on the facts. warranted. Given our Decisions to Deny Institution in IPR2025-00181 and IPR2025-00182 and the official guidance we have received in the Practice Guide, we have no option but to deny Patent Owner’s request that we exercise our discretion to deny institution on all three of the petitions challenging the ’275 patent. Accordingly, we do not exercise our discretion to the deny institution in the instant proceeding. E. Anticipation of Claim 1 by Zhang” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not address the level of skill. See Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’275 patent and not disputed by Patent Owner, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7 7 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that all of the limitations “should be given their ordinary and customary meaning to a” person having ordinary skill in the art. Pet. 19. Although Petitioner argues that none of the limitations are means-plus-function terms, Petitioner provides constructions to the extent that there are means-plus-function terms. Pet. 19–20. Patent Owner does not respond. See Prelim. Resp. For the purposes of this Decision, we need not expressly construe any claim terms.8 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor 8 If either party intends to argue a claim construction at trial, including what is the plain and ordinary meaning of a term, they should do so in a clearly designated section of their briefing. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 21, 2019) (“Practice Guide”), 46, 49 (available at https://www.uspto.gov/TrialPracticeGuideConsolidated); O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ 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))). D. Parallel Petitions” slip op. at 9
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,785,275 - Silicon Motion Inc. v. K.Mizra, LLCInstitutedPTAB · Mar 5, 2025 · IPR2024-01241 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR of claims 1–2 and 4–15 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2, 4–7, and 9–15 are obvious over Johnson or Stubbs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below, and based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and 2-3 years of experience in memory system design,” or, alternatively, “a Master’s degree in one of those fields and 1-2 years of relevant experience.” Pet. 9 (citing Ex. 1003 ¶¶ 26–29). Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “that no construction is necessary for any terms for the purposes of this Petition as the challenged claims are invalid under any reasonable construction.” Pet. 9. Patent Owner states that “the Board need not construe any claim term in a particular manner to arrive at the conclusion that the Petition is substantively deficient.” Prelim. Resp. 7. 5 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. In view of the parties’ positions, we determine that we need not expressly construe any terms for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to combine Johnson and Moss is inadequate. See Prelim. Resp. 20–24. We tend to agree. In the “Motivation to Combine Johnson and Moss” section, the Petition first asserts that “Johnson and Moss are in the same field of endeavor,” which is insufficient without more to provide a motivation. See, e.g., Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364 (Fed. Cir. 2023). The Petition then asserts that “[t]o provide enhanced flexibility, [one of ordinary skill in the art] in possession of Johnson would look to Moss to incorporate a plurality of delay elements to the data strobe signal.” Pet. 22. This is not persuasive because (a) Petitioner argues that Johnson already provides a plurality of delay elements, (b) Petitioner fails to explain where or how additional delay elements from Moss would be added to Johnson, and (c) Petitioner fails to explain how or why the modification would “provide enhanced flexibility,” or even what “enhanced flexibility” might mean in 9 “a first sampling circuit to sample the first delayed data signal based on the strobe signal” 10 “a second sampling circuit to sample the second delayed data signal based on the received strobe signal” this context. Petitioner also argues that “Moss further discloses that the size of the data path – i.e. the number of data pins in each data path – is a design choice well within the knowledge and ability of a POSITA, and expressly recites examples of 4, 8, and 16-bit wide data paths.” Pet. 23. We agree that varying the width of the data path would have been within level of ordinary skill and would have depended on the particular application, but the Petition fails to explain how or why that would have made it obvious to incorporate various elements of Moss into Johnson.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,111,608 - Silicon Motion Inc. v. K.Mizra LLC.InstitutedPTAB · Mar 5, 2025 · IPR2024-01240 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–19 based on all asserted challenges, finding a reasonable likelihood of success on the Meaney and Meaney-Greeff obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 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.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’466 patent based on all the challenges presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in Electrical Engineering, Computer Engineering, or a related field as well as at least two years of academic or industry experience in design and implementation of high-speed digital communication systems.” Pet. 13. Petitioner further asserts that “[a]n individual with an advanced degree in a relevant field, such as computer or electrical engineering, would require less experience in the design and implementation of high-speed digital communication systems, and vice versa.” Id. Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so if trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that “[a] POSITA would have been motivated to incorporate the termination circuitry disclosed in Greeff with the system of Meaney to achieve enhanced system performance and reliability.” Pet. 53 (citing Ex. 1002, app. A at 82). As support, Petitioner asserts that “Greeff’s termination circuitry ensures proper signal integrity and reduces reflections in high-speed data transmission systems.” Id. (citing Ex. 1006, 1:28–31, 4:10–12, 8:3–5; Ex. 1002, app. A at 82). Petitioner further asserts that “Meaney’s calibration techniques, when applied to the termination resistance and transistor drive strength of Greeff, would ensure that these parameters remain optimal throughout system operation.” Id. (citing Ex. 1002, app. A at 82); see also id. at 54 (“A POSITA would have found it obvious to apply Meaney’s calibration process to Greeff’s termination circuitry in order to optimize the termination resistance and drive strength of the termination circuitry.”). Petitioner adds that “[a] POSITA would have had a reasonable expectation of success in combining Meaney and Greeff.” Id. at 54. According to Petitioner, “[t]he integration of Greeff’s termination circuitry into Meaney’s system would have been straightforward and cost-effective,” any “required modifications are minimal, and the results of the combination are predictable, given the complementary nature of the technologies.” Id. (citing Ex. 1002, app. A at 82). Patent Owner does not dispute Petitioner’s analysis for this limitation. See Prelim. Resp. Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Meaney and Greeff teaches or suggests the recited “circuitry” of limitation 17a. We also are persuaded that Petitioner’s proffered reasoning for modifying Meaney’s system to include Greeff’s termination circuitry, namely, to ensure proper signal integrity and reduce reflections, is sufficient to support institution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 26
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,160,466 - PTAB · Feb 28, 2025 · IPR2024-01445 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–20 based on all six asserted obviousness grounds under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the district court litigation was dismissed with prejudice on January 17, 2025. Prelim. Reply 1; Ex. 3001, 10. Accordingly, there is presently no parallel litigation to consider under Fintiv. Nevertheless, Patent Owner argues that “the dismissal of the complaint does not eliminate the relevance of the many Fintiv factors.” Prelim. Sur-reply 1. We disagree. Fintiv indicates that “[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6 (emphasis added). Here, we have not a stay of the district court litigation, but its dismissal with prejudice. See Ex. 3001, 10. Thus, concerns about inefficiency and duplication of efforts are not merely allayed, but are instead obviated.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board analyzes this issue under the following two-part framework set forth in the precedential Advanced Bionics case: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential). As an initial matter, there is no dispute that at least Garecau and TealLevel were not previously presented to the Office. See Prelim. Reply 2 (“Grounds 5 and 6 are based entirely on new references and therefore could not mirror [the prior art combinations asserted] by the Examiner.”); see generally Prelim. Resp. Garecau and TealLevel are the only two references in Grounds 5 and 6. See Pet. 3. Patent Owner does not argue that Garecau and TealLevel, or the arguments presented in these grounds, are the same or substantially the same as art or arguments previously before the Office. See generally Prelim. Resp. 10–16 (making no § 325(d) arguments based on Garecau or TealLevel or directed to Grounds 5, 6). Accordingly, because there is no dispute that Grounds 5 and 6 present art and arguments that were not previously before the Office, in this case we find that § 325(d) is not slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). Petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response (and any additional authorized briefing of record) shows a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We additionally agree with Petitioner that the level of skill proposed by both parties is substantially the same. Specifically, both parties propose a similar education level (Bachelor’s degree in a relevant field of science or engineering) and similar experience (1–2 years of industry experience, including knowledge of sensor design and application development). We observe that in Patent Owner’s proposal, the recited experience is possibly a bit more specific than in Petitioner’s proposal (e.g., it recites “commercial app development” experience and some programming experience). See Prelim. Resp. 3 (emphasis added). However, at this stage and absent argument to the contrary, we discern no material difference between the parties’ proposals. Petitioner’s proposal is consistent with the level of ordinary skill reflected in the prior art references of record, and unlike Patent Owner’s proposal at this stage, is supported by declarant testimony. See Okajima, 261 F.3d at 1355. Accordingly, for purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s proposal, the outcome of this Decision would be the same.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,890,925 - PTAB · Feb 26, 2025 · IPR2024-01161 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR on claims 1–16, finding a reasonable likelihood of prevailing on obviousness over Cooper and over Cooper with Slotznick.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 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.” After considering the Petition, the Preliminary Response, and associated evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one claim of the ’615 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“On this record, we determine that the limitation “without request or acknowledgement” does not set forth any requirements as to a device handshaking process by which two devices agree to exchange information. Instead, we agree with Petitioner that “without request or acknowledgement” merely qualifies the step of “receiv[ing] . . . information of one definite broadcast program . . . identified by a channel selection of another television set in another place.” Pet. 21–22. Hence, the recitation of “without request or acknowledgement” only requires that a device receives information of one definite broadcast program from another device without requesting that information or acknowledging its reception.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor’s degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with television and digital display systems, distributed multimedia communications, and networked computer systems, or other relevant industry experience.” Pet. 4 (citing Ex. 1002 ¶ 46). Patent Owner does not offer a position as to the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art. D. Ground 1: Alleged Obviousness over Cooper and the Knowledge of a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that a POSITA would have been motivated to replace Cooper’s input/output devices with Slotznick’s TV Phone. Pet. 48– 50. Petitioner argues that the replacement of one input device for another is a simple substitution of one known element for another to obtain the predictable result of controlling Cooper’s set-top box 500 with Slotznick’s TV Phone. Id. at 48 (citing Ex. 1005 ¶ 130; Ex. 1002 ¶ 149). Petitioner further contends that the substitution would have been obvious to try. Id. at 49 (citing Ex. 1005 ¶¶ 12, 18; Ex. 1002 ¶ 150).” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,319,615 - PTAB · Feb 20, 2025 · IPR2024-01259 · APJ Kristen L Droesch · IPR · Institution
Instituted IPR on all challenged claims 1–15 and all petition grounds because Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’794 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 8–9. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation, functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, for the purpose of institution and to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“3. “Inherent Resistance” Claim 10 uses the term “inherent resistance of the light source to which the light resistor is attached.” See Ex. 1001, 14:46–48. Petitioner asserts that “there is no ‘inherent resistance’ of an LED, but only the resistance of the LED at any particular operating current flowing through, and voltage across, the LED.” Pet. 21 (citing Ex. 1013, 29 ¶¶ 6–9). Petitioner also points out that the term inherent is not used in the ’794 Patent Specification. See id. Patent Owner does not explicitly address “inherent resistance” in terms of a claim construction. See Prelim. Resp. 6–9. In any event, when addressing an alleged lack of motivation to combine the teachings of the references, Patent Owner compares and contrasts incandescent bulbs, which according to Patent Owner, have an inherent resistance, and LEDs, which according to Patent Owner, do not exhibit self-regulating resistance. See Prelim. Resp. 20 (citing Ex. 2002 ¶ 67); see also id. at 23 (similar argument, citing Ex. 2002 ¶ 73). Indeed, Patent Owner asserts that “the word resistance is not useful when describing LEDs as opposed to incandescent bulbs. . . . LED lights have an exponential current vs. voltage relationship . . . rather than a linear current vs. voltage relationship as found in a simple resistance, such as seen in incandescent light bulbs.” Id. at 20 (citing Ex. 2002 ¶ 66). For the purpose of institution, we understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. To the extent the parties disagree with our understanding, we invite the parties to provide further briefing on the meaning of “inherent resistance” of a LED light source.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 31 ¶ 3; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See Prelim. Resp. 2. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’794 Patent Specification and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,533,794 - PTAB · Feb 20, 2025 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–14 on every asserted ground, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’252 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 7–8. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation, functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, for the purpose of institution and to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“For the purpose of institution, we understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. To the extent the parties disagree with our understanding, we invite the parties to provide further briefing on the meaning of “inherent resistance” of a LED light source.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 32; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See Prelim. Resp. 2. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’252 Patent Specification and the asserted prior art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,096,252 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. 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 ’993 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to 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 . . . 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993
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.