- PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced 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. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 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. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending 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, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for 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 ’078 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - PTAB · Feb 12, 2025 · IPR2024-01131 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–6 and 8–14 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“If, at the time of the institution decision, the district court has not issued orders related to the patent at issue in the petition, this fact weighs against exercising discretion to deny institution . . . .” Fintiv, Paper 11, 10. That appears to be the case here. Although the litigation may have been pending for a year, the parties have not yet begun the court’s claim-construction process, are in the early stages of fact discovery, and the court has not issued any substantive orders regarding the ’801 patent. See Ex. 2001, 4–5. Because the parties’ and the court’s investment in the parallel proceeding is not extensive, this factor weighs against exercising our discretion to deny institution. slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the current record and the parties’ contentions, we determine that Petitioner has shown a reasonable likelihood of prevailing in showing that Kwak anticipates claim 9. We have reviewed Patent Owner’s arguments in opposition to this ground and, on this preliminary record, find them unpersuasive.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that the combination of interlayer 160, gate insulating layer 140, and buffer layer 120 (plus additional layers in display area 200 of Kwak’s flat-panel display) cannot be considered the claimed predetermined material layer, but rather that Petitioner has not explained why they should be so considered. See Prelim. Sur-reply 2 (“[I]t is presumptively permissible to have multiple predetermined material layers as claimed . . . . [b]ut the Petition included no theory or explanation why the three to six separate layers in its theory form a predetermined material layer.”). We agree that Petitioner does not offer an express construction of “predetermined material layer.” At this point, however, we find little in either the claims, the Specification, or elsewhere in the record that limits the meaning of “predetermined material layer” in a way that would exclude the combination of interlayer 160, gate insulating layer 140, and buffer layer 120. The Specification does not expressly define “predetermined material layer” or “predetermined material,” and we have found no evidence in the record that “predetermined material layer” or “predetermined material” has a known meaning in the art, or that otherwise supports Patent Owner’s reading of those terms. Further, we find nothing in the claims or Specification that limits “material” to any specific materials. The Specification provides several nonlimiting examples of materials that can be used if the predetermined material layer is to serve as a passivation layer, and several other (or additional) materials that can be used if the predetermined material layer is to serve as a metal electrode layer. Ex. 1001, 2:47–55. Thus, in view of the Specification, a “predetermined material layer” would simply be a layer made of one or more predetermined materials. In light of Patent Owner’s acknowledgement that “a layer” can mean “one or more layers,” the term “predetermined material layer” would encompass the combination of interlayer 160, gate insulating layer 140, and buffer layer 120.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had a Bachelors’ degree in electrical or mechanical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design or other relevant industry experience” but “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2 (citing Ex. 1003 ¶¶ 34–37). Patent Owner does not offer an alternative definition. See generally Prelim. Resp. The level of ordinary skill in the art is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art.” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 7,226,801 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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 in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’428 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - 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 - PTAB · Jan 27, 2025 · IPR2024-01130 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 5–9 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 5–9 of the ’842 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“impact the Board’s exercise of discretion, including the merits.” Fintiv, Paper 11, 6. “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily denied institution under Fintiv.” Memorandum, 4–5. On the other hand, “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, factors 1–5 are either neutral or weigh at least slightly against discretionary denial of institution. Thus, on balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution, and we need not decide whether Petitioner presents a compelling unpatentability challenge. 1. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately one or more years of professional experience with electronic and optoelectronic system design,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 3 (citing Ex. 1002 ¶¶ 45–46). Patent Owner does not offer an alternative definition. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art (without adopting, however, Petitioner’s open-ended “or more” language).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties have submitted proposed claim constructions. Pet. 4–7; Prelim. Resp. 6. At this stage of the proceeding, however, we 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 17
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,168,842 - PTAB · Jan 27, 2025 · IPR2024-01132 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–7 and all asserted grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Paper 1 (“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1–7 (the “challenged claims”) of U.S. Patent No. 7,586,121 B2 (“the ’121 patent”). 35 U.S.C. § 311. Optronic Sciences LLC (“Patent Owner”) filed a Preliminary Response, Paper 7 (“Prelim. Resp.”), contending that it “does not believe the Petition merits institution.” Prelim. Resp. 1. The Patent Owner Preliminary Response does not include any substantive analysis of Petitioner’s challenges. Id. We have jurisdiction under 35 U.S.C. § 6. 35 U.S.C. § 314 provides that 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl. ¶ 23). Patent Owner does not comment on the level of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 5–6, Prelim. Resp. 1. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation Anticipation is a question of fact, as is the question of what a prior art reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,586,121 - PTAB · Jan 27, 2025 · IPR2024-01134 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–5 based on reasonable-likelihood showings for anticipation over Hekmatshoar and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–5 of the ’733 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Hekmatshoar; 2) claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Hekmatshoar and Gupta or Han; and 3) claims 1–5 are unpatentable under 35 U.S.C. § 103 as obvious over Lee ’149 and Hekmatshoar or Weaver. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The plain language in claim 1 of “auxiliary electrode” does not suggest a requirement that the “electrode” precludes “wires and/or bus lines,” as Patent Owner proposes. Prelim. Resp. 1; see Ex. 1001, 8:55–58. Further, nothing in the Specification clearly limits “auxiliary electrode” to preclude a wire or a bus line. Here, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue such that an “electrode” cannot be a wire or a bus line. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984). Although the Specification discusses various examples wherein an auxiliary electrode may be implemented, Patent Owner points to no special definition, implicit or explicit, for “auxiliary electrode” that is set forth in the Specification which supports Patent Owner’s construction with reasonable clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480. In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 does not preclude a wire or a bus line. We determine no further explicit construction is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Hekmatshoar’s Interconnect is “an electrode . . . supplemental to other electrodes in the structure” that is “electrically insulated from driver TFT” and disposed at “the right side” of “the light emitting device (OLED that includes layers ITO-anode, organic, cathode).” Pet. 19–22; Ex. 1003 ¶¶ 91–95. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’733 patent’s auxiliary electrode 460, Hekmatshoar’s Interconnect is electrically insulated from an active device and disposed at a side of a light emitting device. Id.; see also id. at 2 (annotated Figure 6 of the ’733 patent). We also find availing Petitioner’s contention that Hekmatshoar’s Interconnect is electrically connected with “the first electrode layer (ITO-anode [red]) of the light emitting device (OLED).” Id. at 19. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Hekmatshoar describes “an auxiliary electrode electrically insulated from the active device and disposed at a side of the light emitting device, wherein the auxiliary electrode is electrically connected with the first electrode layer of the light emitting device.” iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been anticipated by Hekmatshoar.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been obvious over Lee ’149 and Hekmatshoar or Weaver. Furthermore, on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Lee ’149 and Hekmatshoar or Weaver. v. Claims 2–5 Petitioner provides detailed explanations as to how Lee ’149 in combination with Hekmatshoar or Weaver renders obvious claims 2–5, depending from claim 1, citing Dr. Baker’s testimony for support. Pet. 39–53 (citing Ex. 1005 ¶¶ 24, 26–27, 30, 38, Fig. 1; Ex. 1003 ¶¶ 141–153, 155–166). Having reviewed Petitioner’s arguments and supporting evidence in the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of claims 2–5 would have been obvious over Lee ’149 and Hekmatshoar or Weaver.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,406,733 - PTAB · Jan 27, 2025 · IPR2024-01133 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that Weaver anticipates certain claims and the asserted Weaver combinations render the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution: factors 1, 4, and 5 are neutral and factors 2 and 3 weigh at least slightly against exercising discretion to deny institution. As a result, for this factor 6, we need not decide whether Petitioner presents a compelling unpatentability challenge on the merits. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Conclusion on Discretionary Denial Under § 314(a) As noted in Fintiv, we consider the above six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that, weighing these factors in a holistic analysis, the circumstances here favoring institution outweigh the overlapping of issues in the district court litigation. Therefore, we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution of this Petition.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. V. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–13 of the ’509 patent to determine whether: 1) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 102 as anticipated by Weaver; 2) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’053; 3) claim 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Song; 4) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’149; 5) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Bae; 6) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Gupta or Han; 7) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’053, and Gupta or Han; 8) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Song, and Gupta or Han; 9) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’149, and Gupta or Han; and 10) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Bae, and Gupta or Han. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 is neither limited to an anode or cathode, nor precludes “a power line, bus line, or resistor” or any electrode that “provides a sole, critical electrical connection to a load.” We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find Patent Owner’s arguments unavailing. In particular, we find unavailing Patent Owner’s contention that “‘bus line 430’ is not an ‘electrode’” (Prelim. Resp. 4), because Patent Owner is relying on a claim construction of “electrode,” requiring “an anode” or “cathode” and excluding a “bus line” (id. at 16), that is not adopted by our construction discussed above. Thus, we are unpersuaded by Patent Owner’s contention that Weaver fails to disclose the “auxiliary electrode” limitation because “Weaver never refers to its ‘bus line 430’ as an anode, cathode, or electrode.” Id. Although Patent Owner contends that “bus line 430 is not ‘auxiliary’ or ‘supplemental’ to anything” (Prelim. Resp. 4), we are persuaded by Petitioner’s reliance on Weaver’s bus line 430 for providing the claimed “electrode,” that is “supplemental to other electrodes in the structure.” Pet. 18; see also Ex. 1004 ¶ 26, Fig. 4; Ex. 1003 ¶ 92. We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that a POSITA would have understood that “anode 406 and bus line 430 are connected in parallel,” which means that “bus line 430 is a supplemental electrode that reduces the total resistance of the pixel structure.” Pet. 19; Ex. 1003 ¶ 94. Thus, we find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Weaver’s bus line 430 is an electrode supplemental to other electrodes in the structure that is electrically insulated from transistor 410 by passivation layer 409, wherein OLED 400, which includes cathode 422, organic layer 424, and anode 406, is disposed above bus line 430, and wherein anode 406 of OLED 400 is electrically connected to bus line 430 by via 428. Pet. 16–19; Ex. 1003 ¶¶ 89–94. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’509 patent’s auxiliary electrode 120, bus line 430 is electrically insulated from transistor 410, wherein OLED 400 is disposed above bus line 430 and anode 406 electrically connected with bus line 430. Id.; also compare Pet. 2–3 (annotated Figure 2 of the ’509 patent) with id. at 16, 20 (annotated Figure 4 of Weaver). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Weaver teaches “a first auxiliary electrode electrically insulated from the active device,” and “a light emitting device disposed above the first auxiliary electrode,” wherein “the light emitting device comprises a first electrode layer electrically connected with the first auxiliary electrode.”” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,263,509 - PTAB · Jan 27, 2025 · IPR2024-01158 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 1–5, 7–15, 17, and 18 on all petitioned grounds, finding a reasonable likelihood of success on the Tateishi anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’377 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’377 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). 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 assessment, the outcome of this Decision would be the same.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Thus, Patent Owner implicitly proposes a narrow construction of “control signal.” However, Patent Owner, at this stage, does not explain adequately why that is the proper construction. The claim language is “control signal,” and that term does not contain the “logical” modifier urged by Patent Owner. See Ex. 1001, 9:44–45, 10:8–9.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,041,377 - PTAB · Dec 11, 2024 · IPR2024-00963 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–21 on all asserted obviousness grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Patent Owner contends we should exercise discretion to deny institution because the court has not considered a motion to stay (Factor 1), jury selection in the District Court Litigation is scheduled to begin on February 17, 2026 (Factor 2), the parties have invested substantially in discovery by exchanging a high volume of documents and conducting extensive source code reviews (Factor 3), there is a high overlap between the challenged claims and those involved in the District Court Litigation (Factor 4), the parties are the same (Factor 5), and Petitioner’s arguments are meritless (Factor 6). Prelim. Resp. 35–36. Patent Owner acknowledges that jury selection in the District Court Litigation will not begin until two months after a Final Written Decision is scheduled to issue in this proceeding. Prelim. Resp. 35. On October 17, 2024, Petitioner offered the following Sotera Stipulation: “VusionGroup will not pursue an invalidity defense in Hanshow Tech. Co., Ltd. et al. v. SES-imagotag SA et al., Case No. 2:23-cv-00617 (E.D. Tex.) that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Ex. 1031. In view of all the circumstances, including the scheduled trial date and Petitioner’s Sotera stipulation, we decline to exercise discretion to deny institution.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we determine that Petitioner has demonstrated a reasonable likelihood that it will succeed on each of its challenges to patentability and we institute inter partes review. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’321 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. FURTHER ORDERED that the trial is authorized on all grounds set forth in the Petition; and.” slip op. at 39
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“1999)); see also Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). Petitioner asserts that “[n]o formal claim constructions are necessary in this proceeding.” Pet. 6. Nevertheless, Petitioner also proposes constructions of certain “system” limitations, should the Board determine that the claims recite “means plus function” limitations, and argues that interpreted this way, such claims would be indefinite because they lack disclosure of sufficient algorithms for the claimed functions. Pet. 6–7. Petitioner acknowledges that, because the claims do not use the term “means,” there is a presumption against their being interpreted as means plus function limitations and that purported indefiniteness does not preclude the Board from addressing the patent patentability of the claims on sections 102 and 103 grounds. Id. (citing Sony Elecs. Inc. v. Jawbone Innovations, LLC, IPR2023-01352, Paper 7, 47 (PTAB Mar. 6, 2024); Ex. 1003 Houh Decl. ¶¶ 51–52); see also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Patent Owner argues the claims do not recite means plus function limitations and agrees with Petitioner that no claim construction is required. Prelim. Resp. 7–8. The standard is whether the words of the claim are understood by person of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. Williamson F.3d at 1349, Dyfan LLC v Target Corp., 28 F.4th 1360, 1365–1366 (Fed. Cir. 2022); see also Zeroclick LLC v. Apple Inc., 819 F.3d 1003, 1008–1009 (Fed. Cir 2018). Having reviewed the claims and the Specification, for purposes of institution, we determine that an ordinarily skilled artisan would have understood the subject matter that is claimed to have a sufficiently definite meaning as the name for structure so additional claim construction is required.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill (“POSITA” or “ordinarily skilled artisan”) as having “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics or automated object recognition methods and systems. Pet. 6 (citing Ex. 1003, Houh Decl. ¶¶ 18–19). Petitioner also states that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. For purposes of this proceeding, Patent Owner does not dispute Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 7. 5 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the ’321 patent issued from an application filed after March 16, 2013, we apply the AIA statutory basis for unpatentability. 6 U.S. Patent Application Publication No. 2012/0195363 (Ex. 1005) 7 U.S. Patent No. 8,139,817 (Ex. 1006) 8 U.S. Patent Application Publication No. 2011/0113461 (Ex. 1007) 9 U.S. Patent Application Publication No. 2014/0044348 (Ex. 1009) 10 U.S. Patent No. 8,634,601 (Ex. 1008) references themselves. 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). As Petitioner’s undisputed description of the level of ordinary skill appears commensurate with the scope of the subject matters claimed and the references, we apply Petitioner’s description in this proceeding.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,701,321
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.