- PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,686,562 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713 - PTAB · Mar 20, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 8–13, and 15 on all asserted grounds, finding a reasonable likelihood that Takeuchi anticipates those claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’202 patent. Accordingly, we institute an inter partes review of claims 1, 3, 4, 8–13, and 15 of the ’202 patent. A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or “POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a related field, and three to four years of experience, or a master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of experience.” Pet. 6 (citing Ex. 1003 ¶ 13). Petitioner further contends that “[s]uch experience would include a familiarity with thermal fluid delivery devices and/or the components and underlying technology used therein, and a higher level of 1 US 5,249,586, issued Oct. 5, 1993 (Ex. 1004, “Morgan”). 2 EP 0 845 220 B1, published Jan. 26, 1998 (Ex. 1006, “Susa”). 3 US 2005/0205084 A1, published Sept. 22, 2005 (Ex. 1007, “Gupta”). 4 US 6,155,268, issued Dec. 5, 2000 (Ex. 1009, “Takeuchi”). at 6–7 (citing Ex. 1003 ¶ 13). Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. See 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 a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“term “wicked into contact” that the Board adopted in a prior inter partes review proceeding that addressed the same term in an earlier, related patent. Pet. 7 (citing IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022)). ‘wicked into contact’ to mean: ‘wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed [to] the heat produced by, the heater,’” and “[t]he present Petition adopts this formal construction for purposes of this IPR proceeding.” Id. (citing IPR2020-01602, Paper 32 at 15). Patent Owner also “adopts this construction for purposes of” the Preliminary Response, and argues that “Petitioner’s grounds fail even under its proposed construction of ‘wicked into contact.’” Prelim. Resp. 13. For purposes of this Decision, we adopt the Board’s prior construction of “wicked into contact,” namely, “wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed to the heat produced by, the heater,” which is undisputed on this record. See Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc., IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022). C. Asserted Anticipation by Morgan” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot reached
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or inherent, in the single anticipating reference.’” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that Morgan discloses “a storage compartment . . . being arranged such that the liquid aerosol-forming material can be wicked into contact with the electrical resistance heater to volatilize the liquid aerosol-forming material” as recited in claim 1.” slip op. at 12
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,925,202 - PTAB · Feb 27, 2025 · IPR2024-01382 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of success based on Fukui’s teachings.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems. Pet. 24 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill in the art, or offer its own assessment. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’423 patent and the asserted prior art, and we apply it in our patentability evaluations below. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In this proceeding, Patent Owner does not dispute any of Petitioner’s contentions as to claim construction or offer any construction of its own for any term. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is inconsistent with the plain language of the claims. We also question whether that construction adds clarity in seemingly substituting “width that accommodates” for “width,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this time, we find persuasive Petitioner’s position that Fukui’s teachings account for the pertinent “width” requirements of each of claims 1, 9, and 17. See, e.g., Pet. 30, 32–46. On this record, Dr. Ralph provides sufficient testimony that under either of the parties’ proposed constructions of the limitations involving cassette widths, Fukui’s teachings account for those limitations. See, e.g., Ex. 1003 ¶¶ 71–98.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Owner’s challenge to Petitioner’s Fukui-based grounds is whether, in Fukui, a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette.11 We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 11 There is no dispute on this record that the term “module” as used in Fukui is analogous to the term “cassette” as used in the ’423 patent. 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,740,423 - PTAB · Feb 27, 2025 · IPR2024-01227 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all grounds for claims 1–5 and 8–13, finding a reasonable likelihood that claim 8 is anticipated by Fukui and claims 1 and 8 are obvious over Fukui-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner contends that we should deny institution under 35 U.S.C. § 325(d) “because the Petition presents ‘the same or substantially the same prior art or arguments previously . . . presented to the Office.’” Prelim. Resp. 25–31 (alteration in original). Specifically, Patent Owner explains, the Office previously considered Sedor during the ’542 patent’s prosecution, and Sauter was made of record but not considered during prosecution. Id. Patent Owner, however, states that it “recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 25 n.3. Because, as set forth below, we do not, on the present record, find any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and we need not consider it further.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have [had] a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–31. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’542 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“enough to resolve . . . the lead Fukui ground” but that “[t]here are two disputes relevant to the alternative Sauter ground.” Pet. 22. With respect to the first of these “disputes,” Petitioner presents two claim constructions for the claim term or phrase “cassette width as measured between outer side edges thereof of one of one, two, three, four and six standard width units.” Id. at 23. The constructions are said to be from “the co-pending litigation,” with one characterized as “Patent Owner’s proposed construction”6 and the other as “CommScope’s proposed construction.”7 Of note is Petitioner’s 6 The claim construction attributed to Patent Owner is: “cassette width as measured between the outer side edges thereof that accommodates one of one, two, three, four, or six receptable modules.” Pet. 23. 7 Petitioner’s construction is: “The cassette width as measured between the outer side edges thereof equals one, two, three, four, or six times the contention that “[Patent Owner]’s construction cannot be correct,” and accompanying explanation in that respect. Id. at 22–23, 24. Patent Owner acknowledges that there is a dispute between the parties as to the noted claim construction but urges that “[t]he Board, however, need not fully resolve this claim construction dispute,” as, in Patent Owner’s view, the grounds based on Sauter are deficient based on either construction. Prelim. Resp. 21–22. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute, nor does it necessitate that we adopt any particular construction for the pertinent claim term. 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))). We invite the parties to develop the record more fully on this claim- construction issue during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,435,542 - PTAB · Feb 27, 2025 · IPR2024-01218 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR of claims 1–5 and 8–13 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Stated somewhat generally, the core question underlying Patent Owner’s challenge to Petitioner’s Fukui-based grounds is whether a conversion module (e.g., 20) that is formed by coupling together two unit modules establishes that conversion module as a new structure identifiable as a unitary cassette. We discern that Fukui uses the term “conversion module” to refer to component 10, and uses that same term, i.e., “conversion module” to refer to component 20. See, e.g., Ex. 1004, 6:33–35, 7:23–25. The components 10A and 10B that make-up conversion module 20 are characterized as each being a “unit module.” See, e.g., id. at 7:25–27. Thus, once unit modules 10A and 10B are coupled together to form the structure that is “conversion module 20,” the current record reasonably suggests that the conversion module 20 is a component analogous to conversion module 10, but with a larger width, i.e., two times the width. Further, Fukui also characterizes unit modules 10A and 10B as being “fixed” to one another via coupling member 21 (see, e.g., id. at 10:11–16) and forming “one body” (see, e.g., id. at 8:2–3). Further still, as described and shown in Fukui (e.g., Figure 5), conversion module 20 is structured to operate via a singular multicore optical connector 16 from which optical fibers F1 extend to all of the single-core optical connectors 17 of the conversion module. Id. at 7:52– 8:6. Thus, conversion module 20 is recognizable has having a singular system of fiber optic components within its body. At this time, we regard such characterization of the coupled unit modules 10A and 10B as reasonably giving rise to an understanding that the resulting conversion module 20 constitutes a unitary module or cassette component.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. REQUEST FOR DENIAL UNDER 35 U.S.C. § 325 Patent Owner contends that the Board should exercise its discretion to deny under 35 U.S.C. § 325(d) on the theory that the Petitioner relies on substantially the same prior art and arguments that were previously considered by the Office. See Prelim. Resp. 31–37. Patent Owner, however, states the following: “Patent Owner recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 31, n.4. Because, as set forth above, we do not agree at this time as to any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and need not consider it further.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute or necessitate that we adopt any particular construction for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). 9 The claim construction attributed to Patent Owner is: “cassette width that accommodates one of one, two, three, four, or six receptable modules.” Pet. 21. 10 Petitioner’s construction is: “The cassette width equals one, two, three, four, or six times the standard width unit, without an additional amount. This means the cassette width must be evenly divisible by the standard width unit.” Pet. 21.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,795,107 - 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 - 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 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686
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.