- PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after 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
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - PTAB · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually 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). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - PTAB · Mar 13, 2025 · IPR2024-01281 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 13 would have been obvious over Cornett, Paatela, and Nelson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious . . . to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; and (4) when in evidence, objective indicia of non-obviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in The Art (“POSITA”) in Sept. 2007 would have had a working knowledge of network communications techniques and highspeed packet processing technologies. Ex.1003, ¶20. A POSITA would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of work experience in network communications. Lack of work experience can be remedied by additional education, and vice versa. Ex.1003, ¶20. Pet. 13. We use this definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and the ’471 patent.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no terms require express construction. Pet. 13. We do not expressly construe any terms at this time. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to the claim requirement that the direct memory access device concurrently write the packet buffer memory and the protocol stack layer memory, Petitioner asserts that neither Cornett nor Paatela explicitly describes the timing of packet writing. Pet. 42. Petitioner asserts, however, that Nelson discloses writing a packet header separately and in parallel with writing the entire packet. Id. (citing Ex. 1006, 6:66–7:4; Ex. 1003 ¶ 89). Indeed, Nelson explains that the parallel storage action “avoid[s] having to read the frames out of the [larger frame] buffer” when reading a header, which eliminates the need for a separate reading step and “allows the routing decision to be made before the [frame] buffer becomes available.” Ex. 1006, 2:1–22 (containing the quoted language), 7:1–4 (describing “parallel . . . storage”). Petitioner asserts that it would have been obvious to write the packet header at the same time as writing the entire packet in Cornett, because Cornett, Paatela, and Nelson are concerned with speed, and writing in parallel would increase speed (vs. writing serially). Id. at 43–44 (citing Ex. 1003 ¶ 90); see also id. at 26 (similar argument). Reviewing Petitioner’s position with respect to independent claim 13, we determine that Petitioner has addressed each limitation in sufficient detail and with adequate citations to the record. Petitioner has also provided sufficient reasons for combining the teachings of Cornett, Paatela, and Nelson with a reasonable expectation of success. Reviewing the record before us, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 13 would have been obvious in view of Cornett, Paatela, and Nelson.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,738,471 - PTAB · Mar 7, 2025 · IPR2024-01347 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR of claims 1–27 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We must also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesNo construction neededOther
“1. Means-Plus-Function Terms Challenged claim 26 recites elements using the word “means.” See Ex. 1001, 21:6–22:5. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies.9 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claim 26. See Pet. 6–8; see generally Prelim. Resp. a. “system firmware means for detecting loss of lockstep (LOL) for a processor in a multi-processor system” (Claim limitation [26a])” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that these terms “should be construed to include both mismatch errors and errors that may eventually result in mismatch errors constituting a ‘precursor to lockstep mismatch’—including at least one of (1) detecting a lockstep mismatch error; and (2) detecting an error that may eventually cause a lockstep mismatch error.” Pet. 6. Petitioner asserts that “[t]he specification provides detecting these two types of errors as examples of detection of LOL.” Id. (citing Ex. 1001, 2:40–3:6, 7:25–36; Brogioli Decl. ¶¶ 34–36). Petitioner further asserts that this construction “is consistent with the undisputed construction in the IPR challenging U.S. Patent No. 7,502,958.” Id. (citing BMW of N. Am., LLC v. Foras Techs. Ltd., IPR2023-01373, Paper 18 at 2 (PTAB July 12, 2024)). Patent Owner does not dispute Petitioner’s position or discuss claim construction in the Preliminary Response. meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy. 3. Summary and Conclusion For the reasons given, we determine that at this stage, we do not need expressly to construe any claim term for this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“alleged invention “would have at least a bachelor’s degree in computer science, computer engineering, or equivalent, and at least two years of prior work experience with computer architecture design, including fault-tolerant computer architecture design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 4 (citing Brogioli Decl. ¶¶ 28–30). At this stage, Patent Owner does not respond to this contention. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’302 patent specification and the asserted prior art.” slip op. at 27
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,624,302 - PTAB · Mar 7, 2025 · IPR2024-01346 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–30 and all petition grounds, finding a reasonable likelihood of unpatentability based on Fox, Safford, and Arai, with or without Landry.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As can be seen in the discussion above and the analysis of Petitioner’s grounds below, Arai and Landry are significant to Petitioner’s challenges. Because the Office did not previously consider all of the prior art references or combinations of references relied on in the Petition, including Arai and Landry, and because Arai and Landry are not the same or substantially the same as the art that was previously considered, we determine the Office did not previously consider the same or substantially the same prior art as is relied on in the Petition.8 Further, we find that there is not a substantial overlap, if any, between the arguments made during examination and the manner in which Petitioner relies on the prior art, including Arai and Landry, as discussed above. Therefore, part one of the Advanced Bionics framework is not met, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request that we exercise our discretion to deny institution in this proceeding under 35 U.S.C. § 325(d). We therefore institute inter partes review on all challenged claims and all grounds. See” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Motivation to Combine Fox, Safford, and Arai and Fox, Safford, Landry, and Arai Petitioner asserts that a person of ordinary skill “would have found it obvious to combine Fox’s multiprocessor system with Safford’s lockstep processor and error detection logics and Arai’s processor-switching implementation details.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to implement the processors in Fox as lockstep processors to improve reliability and availability of Fox’s server system for critical processes, for which higher reliability and availability of the system are desired.” Brogioli Decl. ¶ 90. He further testifies that “[a person or ordinary skill] also would have been motivated to implement in Fox the error detection logics that detect loss of lockstep together with the lockstep processors as taught by Safford to implement lockstep functions and further improve availability of the system.” Id. He testifies that “[a person of ordinary skill] would have understood how to implement Fox’s processors as lockstep processors with error detection logics and expect success. [A person of ordinary skill] would only have applied well-known configurations and ordinary hardware and software configuration skills.” Id. ¶ 91. Dr. Brogioli provides additional reasons motivating the combination. Id. ¶¶ 92–99. Petitioner contends that “Arai discloses switching the role of a failing processor with a spare processor.” Pet. 10. Dr. Brogioli testifies that “[a person of ordinary skill] would have been motivated to incorporate Arai’s teaching of transferring processor context from the failing processor to the spare processor not to interrupt the operating system and its running applications as desired by Fox.” Brogioli Decl. ¶ 109. He reasons that “[a person of ordinary skill] would have understood that incorporating Arai’s benefit of switching the role of the failing processor to the spare processor without affecting the operating system and running applications, which is expressly taught as desirable by both Fox and Arai and well known in the art.” Id. ¶ 110. Petitioner asserts that a person of ordinary skill also would have been motivated to further combine these references with Landry. Pet. 33–35. Dr. Brogioli testifies that “Landry discloses a fault-tolerant boot process that dynamically designates a functional CPU as logical CPU0 that performs the unique functions of a boot processor.” Brogioli Decl. ¶ 147. He testifies further that “[a person of ordinary skill] would have understood Landry’s process would have been a suitable option for selecting a boot processor in Fox’s system consistent with the initialization protocol of the IA-32 multiprocessor system.” Id. He asserts that “[a person of ordinary skill] would have understood the benefits of implementing Landry’s boot processor selection process in Fox.” Id. ¶ 148. Among other reasons, “[a person of ordinary skill] would have further understood that using the logical CPU0 as the identification for the boot processor allows for transparent replacement of the physical processor experiencing a failure with another processor without interrupting the operating system.” Id. At this stage, Patent Owner does not respond to these arguments by Petitioner or refute the testimony by Dr. Brogioli. On this record, we find that Petitioner has sufficiently demonstrated a motivation to combine Fox and Safford with Arai and to further combine these references with Landry with a reasonable expectation of success.” slip op. at 29
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We are not aware of any controversy between the parties over the meaning of these claim terms that would affect this Decision. Therefore, we determine that at this stage, we do not need to expressly construe these claim terms to resolve a controversy.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,627,781 - PTAB · Mar 5, 2025 · IPR2024-01357 · APJ Daniel Kazhdan · IPR · Institution
The Board instituted IPR on claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 on all four obviousness grounds, finding a reasonable likelihood of success on at least one ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We find that this factor marginally favors Petitioners. Fintiv explains that the fact that a “district court has denied a motion for stay without prejudice” and has indicated on the record “that it will consider a renewed motion or reconsider a motion to stay if a PTAB trial is instituted” “has usually weighed against exercising authority to deny institution.” Fintiv, Paper 11 at 6–7. That is what happened here. When the district court denied Petitioner Savant’s motion for a stay in the Ohio litigation, it stated that, “[i]f the Patent Trial and Appeal Board accepts the petition for inter partes review, the parties may rebrief this issue.” See No. 1:24-cv-473 (N.D. Ohio) December 12, 2024, Order. Ex. 1025. Thus, this factor weighs marginally against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“prevail in showing that it would have been obvious to use blue light with a wavelength that is greater than 440 nm. Basin-2007 does not specify a specific wavelength for the blue light, but, as Patent Owner acknowledges, “blue light is generally emitted in the range of 380 to 500 nm.” Prelim. Resp. 55; see Ex. 1002 ¶ 121. Thus, the question is whether a skilled artisan, when looking for which wavelength to use, would have found it obvious to use anything in the half of the blue-light range that is greater than or equal to 440 nm. On its own, this overlap in ranges would be strong evidence of obviousness. See Galderma Lab’ys, L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Petitioners show even more. Basin-2005 discloses that there is an “assum[ption]” that blue-light LEDs emit “in the range of 420-490 nm.” Ex. 1006 ¶ 30 (cited in Pet. 25). Basin-2005 additionally teaches that its “blue, UV, or near UV LED[s]” are “relatively easy to implement and consistently produce[] the desired white light temperature.” Id. ¶ 6 (cited in Pet. 25). Furthermore, Shimizu and Stokes indicate that people were using higher wavelength blue-light in their LEDs. See Pet. 8, 24–25 (citing sources). Because a skilled artisan would have needed to select some wavelength for the blue light disclosed in Basin-2007, at this stage, we conclude that the skilled artisan would have found it obvious to include wavelengths from the higher end of the range—as disclosed in so many references. Basin-2007 discloses using a “conventional white light LED.” See Ex. 1005 ¶ 21. As evidenced by Shimizu and Stokes, the conventional white light LED sources used blue light with wavelengths greater than or equal to 440 nm. See Ex. 1002 ¶ 121 (citing sources). Patent Owner argues that “quantum efficiency” considerations would lead to using lower wavelengths, but Patent Owner does not explain why these same considerations did not convince Basin-2005, Shimizu, or Stokes to use lower wavelengths. Based on our review of the current record, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art According to Petitioners, [A person of ordinary skill in the art] would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline. A [person of ordinary skill in the art] would also have one to two years of experience in the field of LED packaging design. More education could substitute for experience, and vice versa. Pet. 6. For purposes of institution, “Patent Owner takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 36–37. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioners and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We determine that the plain and ordinary meaning of “light diffusing layer” is exactly what it says: “a layer that diffuses light.” The claims separately recite one function for this layer: it must “improve[] an off-state white appearance of the wavelength conversion component.” Ex. 1001 at 26:15–17; see id. at 27:25–27. That is all.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,604,678 - 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
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.