- Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00894 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’767 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“under 112(f) pointing out the respective functions and structure disclosed in the ’767 patent specification. Pet. 18–20. Patent Owner does not dispute the construction of these terms, stating only “that claim construction is not required to resolve any issues.” PO Resp. 2 (citing Pet. 18–20). Where there is no dispute and our Decision does not turn on any particular construction of these terms, we need not decide at this point whether “receiver module” and “transmitter module” invoke means-plus-function under 112(f). Pet. 13; Prelim. Resp. 5. And, because there is no dispute, we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the” slip op. at 10
- BurdenInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1889, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,462,767 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 5, 2025 · IPR2025-00895 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted challenges after finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have had at least [a bachelor’s degree in] electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. . . . A POSITA would also have familiarity with the 3GPP LTE standards, and would have understood how to search through the available Technical Specifications for implementing RAN technologies. Pet. 21–22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage, with a proposed modification to insert “a bachelor’s degree in” to Petitioner’s statement. Prelim. Resp. 12–13; id. at 12, n.1. We have inserted this proposed modification in brackets in the above block quotation. We are persuaded, on the present record, that Petitioner’s proposal, as modified by Patent Owner, is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s skill definition at this stage.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not propose any claim constructions. See Pet. 11–12; Prelim. Resp. 8. As no terms are in dispute, we determine that no terms require construction at this stage.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION At this stage of the proceeding, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges as to at least one challenged claim. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of all challenged claims of the ’113 patent is instituted with respect to all challenges of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing on the entry date of this Decision.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“measurement value, as Jover teaches.” Id. (citing Ex. 1005 ¶¶ 39–40; Ex. 1003 ¶¶ 115–30). Among other reasons, Petitioner contends that a POSITA would have been motivated to combine “to improve the accuracy and reliability of the beam failure determination.” Id. at 37 (citing Ex. 1003 ¶¶ 115–30). Petitioner further contends that a POSITA would have had a reasonable expectation of success because “it would have been straightforward for a POSITA to implement Jover’s triggering condition in Xia’s method.” Id. at 38 (citing Ex. 1003 ¶¶ 115–30). After considering Patent Owner’s arguments, which we address below, we agree with Petitioner at this stage that the combination of Xia and Jover renders obvious limitation [1e]. Patent Owner first argues that Jover “does not cure the deficiencies of Xia because Jover’s threshold condition for an increase in BER is not used for triggering a transmission of the first and second radio signal.” Prelim. Resp. 20. Just like Xia, Patent Owner contends, Jover discloses no “causality between the threshold being exceeded and transmitting the first and second radio signal.” Id. at 21. This argument does not undermine Petitioner’s showing at this stage because Petitioner relies on Xia, not Jover, for the claimed “triggering the transmission,” or “causality,” as Patent Owner calls it. See Pet. 36–38. That is, Petitioner relies on Jover for the triggering condition and on Xia for the actual triggering. See id. Patent Owner’s argument attacking the references individually is unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of refences.”). Patent Owner next contends that one of ordinary skill in the art would not have combined Xia and Jover “since Jover is directed to the opposite objective of the ’113 Patent or Xia.” Prelim. Resp. 21. That is, Patent Owner asserts, Jover teaches away from the disclosed methods. Id. at 22. Patent Owner explains, “Jover provides no attempt to improve the beam strength, but rather ignores it through beam sweeping or nullif[ies] it, in contrast to the purpose of the ’113 Patent.” Id. at 22–23. At this stage, Patent Owner’s argument is insufficient to undermine” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 10,568,113 - PTAB · Jan 6, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part 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 [the] challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’355 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,613,355 - PTAB · Nov 15, 2023 · IPR2023-00821 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1–20 on all petition grounds, finding a reasonable likelihood that claims 1 and 3 are anticipated by Jones and claims 1–20 are obvious over Jones, Zheng, and Keenan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’008 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’008 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proffers constructions for two terms, namely, (1) “threat model components” and (2) “attack paths,” as recited, for example, in independent claim 4. Pet. 12. Petitioner submits that it defines these two terms “consistent with the ’008 patent specification and applies the plain and ordinary meaning that [the skilled artisan] would attribute to the remaining terms.” Pet. 12. “Patent Owner submits that the Board need not engage in any pre-institution claim construction of these [two] terms.” Prelim. Resp. 11. Based upon our consideration of the record at this stage of the proceeding, we conclude that it is unnecessary to interpret expressly any term in the ’008 patent claims for which we institute inter partes review. See Nidec, 868 F.3d at 1017. Nevertheless, we determine that briefing during the trial on the proper interpretation of certain claim terms may assist us in resolving issues presented in this case. In particular, we invite the parties to address the proper construction of the limitation “redefine the first threat model by including in it a second threat model associated with the component group,” as recited, for example, in independent claim 1, and to provide evidentiary support therefor (the parties should focus particularly on defining the full scope of what it means to “redefine” the first threat model and to “include” a second threat model “in” a first threat model). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, we encourage the party to explicitly identify such meaning(s) and the evidentiary support therefor. In addition, the parties should consider whether Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB Apr. 28, 2016) (precedential) applies to limitations of the challenged claims, such as claim 1’s recital of “configuring the diagram interface to, in response to receiving one or more user inputs, add a component group to the first threat model.”” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Pet. 35–36 (emphases added) (citing Ex. 1004, 6:12–34; Ex. 1003 ¶¶ 81–84). As we understand Petitioner’s argument (and its expert’s testimony), Petitioner argues Jones “modifies,” i.e., “redefines,” a “first threat model” (level n) by “including” in it cybersecurity threats (e.g., via metadata) associated with nested components (i.e., “a second threat model”), to produce the “modified” (“redefined”) “first threat model” (level n+1). See id.; In re Bond, 910 F.2d at 832–33 (anticipation “is not an ‘ipsissimis verbis’ test”). In other words, Petitioner argues that, although Jones may not use the identical terminology as the ’008 patent, Jones nevertheless explicitly discloses limitation 1[f] to the skilled artisan, by describing modifying a first “threat” model from a level “n” model to a level “n+1” model by including therein threats associated with a particular layer of components (nested components), i.e., a second “threat” model. Based on the record before us, we find Petitioner’s arguments persuasive.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,699,008 - PTAB · Oct 6, 2023 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds, finding a reasonable likelihood that Keenan anticipates the claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’366 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’366 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time of the earliest effective filing date of the ’366 patent: would have had a Bachelor’s degree in computer engineering, computer science, mathematics, or a similar discipline, with at least three years of relevant industry or research experience, including experience in software development and designing or implementing threat models. Additional work or research” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proffers constructions for four terms, namely, (1) “third party software application,” (2) “third party diagram components,” (3) “visual representations of the threat model components,” and (4) “threat model components,” each as recited, for example, in independent claim 1. Pet. 12–14. Petitioner submits “[Patent Owner] defined [these] claim terms in the specification and file history,” “Petitioner is applying those definitions in this petition,” and “[f]or all other claim terms, Petitioner applies the plain and ordinary meaning that a [skilled artisan] would attribute to those terms.” Pet. 12. “Patent Owner submits that the Board need not engage in any pre-institution claim construction of these [four] terms.” Prelim. Resp. 11. Based upon our consideration of the record at this stage of the proceeding, we conclude that it is unnecessary to interpret expressly any term in the ’366 patent claims for which we institute inter partes review. See Nidec, 868 F.3d at 1017. Nevertheless, we determine that briefing during the trial on the proper interpretation of certain claim terms may assist us in resolving issues presented in this case. In particular, we invite the parties to address the proper construction of “threats,” “threat model components,” “visual representations of the threat model components,” and “mapping files,” and the evidentiary support therefor. To the extent that a party proposes that such a term should have its ordinary and customary meaning, we encourage the party to explicitly identify such meaning(s) and the evidentiary support therefor.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“does not disclose the “threats” described and claimed in the ’366 patent. See Prelim. Resp. 5–7, 11–19. Based on the record before us at this stage of the proceeding, we disagree and preliminarily find Patent Owner’s arguments unavailing, as further discussed below. In particular, Patent Owner concedes that “Keenan discloses that color can ‘represent different types of risk (e.g., cyber, environmental, accidental, etc.),’” where Keenan displays such colors associated with objects in a topology. Prelim. Resp. 17 (citing Ex. 1004, 16:40–51) (emphases added); see Ex. 1004, Fig. 7. But Patent Owner then merely concludes, without citing any factual support, that “use of a color identifying the generic nature of a risk still fails to disclose any threats associated with the risk.” Id. at 17– 18. On the other hand, Petitioner’s expert, Mr. Hurlbut, testifies: Keenan demonstrates that its risk measurement and display includes a determination of threats where Keenan discloses a risk measurement view that uses [] color to “represent different types of risk (e.g., cyber, environmental, accidental, etc.).” [Ex. 1004], 16:40–51. [The skilled artisan] would understand that “types of risk,” as disclosed in Keenan are threats because the described examples are all types of threats (cyber, environmental, accidental). Thus, Keenan discloses threats within its risk analysis. Moreover, [the skilled artisan] would understand that risk is a function of threats exploiting vulnerabilities to obtain, damage, or destroy assets. In other words, threat modeling is used to identify risk. Ex. 1003 ¶ 79 (cited at Pet. 21–24); see id. ¶ 82 (cited at Pet. 26–28). Patent Owner disputes this testimony of Mr. Hurlbut using only attorney argument, and without telling us, for example, why Mr. Hurlbut allegedly is wrong (e.g., by explaining why specific “types” of risk do not fall within the scope of “threats” as broadly recited in claim 1, or how “risk” is not a function of “threats” in Keenan, as explained by Mr. Hurlbut). See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Moreover, although Patent Owner characterizes the “types of risk” disclosed in Keenan as identifying a “generic nature of a risk” (Prelim. Resp. 17–18 (emphasis added)), we note that “threats” is broadly recited in claim 1 with no requirement as to any level of specificity of such threats.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,713,366 - Apple Inc. v. Immervision, Inc.InstitutedPTAB · Aug 1, 2023 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Institution
Instituted inter partes review of claims 1–7 on all asserted grounds: anticipation and/or obviousness based on Thibault, Matsusaka, and Kim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“used to compensate” language is an “intended use,” we agree with Patent Owner that the language including and following the “being used to compensate” language of claim 1 results in a structural limitation. Per the language of claim 1, the location of the “zone” is keyed to an area of the image where the quality drops due to a drop either of relative illumination or of MTF, and where the image magnification takes effect. The language of claim 1 requires that the zone be “intentionally” created. Within this “zone,” lower or higher object to image magnification (compared to linear targeted resolution) is required depending on the conditions. The “being used to compensate” language describes the conditions (i.e. lower relative illumination or lower MTF) that lead to the intentional creation of the “zone” where the image magnification is required. As Patent Owner notes, the “being used to compensate” language explains “how the created zone is arranged within the field of view of the optical apparatus.” Prelim. Resp. 11. This “tells us something about the structural requirements” of the zone intentionally created within the apparatus. K-2 Corp., 191 F.3d at 1364. Accordingly, we decline to view the “being used to compensate” language of claim 1 as an “intended use.” Any claim construction at this stage in the proceeding is preliminary, and our final determinations as to claim construction will be made on the full record, as developed during trial.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states that solely for purposes of the Preliminary Response, it “does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” Prelim. Resp. 10. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner’s comparison of Thibault’s Figure 6 and the ’120 patent’s Figure 7 (above), particularly with respect to the downward resolution curve circled in green, supports Petitioner’s assertion that Thibault’s apparatus meets the “being used to compensate” language. Id. at 30–31. We are also persuaded that Petitioner’s comparison of Thibault’s Figure 6 and the ’120 patent’s Figure 7, in view of the language of the ’120 patent (the “downward curve between maximum value 712 and position 714 allows the lens system to have a higher relative illumination value toward the edge of the field of view,” Ex. 1001, 6:36–41), supports Petitioner’s assertion that Thibault’s apparatus “would therefore have the same impact on relative illumination as described in the ’120 Patent.” Id. at 31 (citing Ex. 1003 ¶ 123). Although Patent Owner argues that “slope alone cannot equate to the claimed magnification zones” (Prelim. Resp. 16), at this stage in the proceeding we have unrebutted testimony from Petitioner’s declarant, providing reasoning supporting Petitioner’s arguments about Thibault’s disclosures and limitation [1e]. Pet. 25–32 (citing Ex. 1003 ¶¶ 117–124). On this record, we are persuaded that Petitioner establishes a reasonable likelihood of prevailing on its arguments that Thibault discloses and/or renders obvious the limitations of claim 1. On the present record, Patent Owner does not substantively dispute Petitioner’s arguments as to dependent claims 2–7. Prelim. Resp. 13–18. We have reviewed Petitioner’s arguments and the cited evidence, and, on the present record, Petitioner shows sufficiently that Thibault discloses the limitations of claims 2–7. Accordingly, Petitioner shows a reasonable likelihood of prevailing on its argument that claims 1–7 would have been anticipated by or obvious in view of Thibault.” slip op. at 29
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A “prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,795,120 - PTAB · Aug 1, 2023 · IPR2023-00313 · APJ John D Hamann · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2022). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determined that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’708 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“dispute [Petitioner’s] characterization of the level of ordinary skill in the art for the purpose of [Patent Owner’s] Preliminary Response, except that it disagrees that a degree in Materials Science is sufficient.” Prelim. Resp. 38– 39. Patent Owner does not explain its basis for this disagreement, nor how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience.” Id.; Pet. 6. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 6. This definition is consistent with the ’708 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). To the extent that a dispute arises during trial concerning the application of the cited prior art to the term “adjacent,” in the context of the limitations, the parties should during trial fully develop the record for claim construction purposes for this term, in accordance with our Rules.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). At this stage of the proceeding, we agree with Petitioner that these combined teachings provide for improved optimization of the print quality for that region using the temperature value measured by the TSR located on the substrate as taught by Giere673, which would have motivated one of ordinary skill in the art to make the combination. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,594,708 - Apple Inc. v. Immervision, Inc.InstitutedPTAB · Jul 11, 2023 · IPR2023-00471 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenges to claims 2, 4, 27, 29, and 30, finding a reasonable likelihood of success and material Office error under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “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) (2018). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’990 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“§ 325(d), the Board applies a two-part framework: (1) first, we determine 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, we examine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8. In applying the two-part framework, we consider several non- exclusive factors (“the Becton, Dickinson factors”), including: (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 (f) the extent to which additional evidence and facts presented in the petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). Factors (a), (b), and (d) of the Becton, Dickinson factors relate to whether the art or arguments presented in the petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. Factors (c), (e), and (f) “relate to whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether a petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner argues that one of ordinary skill in the art “would have understood that Baker’s system corrects or compensates for the distortion introduced into the image by its objective lens (which has a non-linear image distribution)” but that “Baker does not expressly describe how such corrections are applied as part of its image transformation.” Id. at 22–23. Shiota “discloses compensation or correction of distortion in an image captured by a fisheye lens using a non-linear distribution function.” Id. at 23. Thus, according to Petitioner, “implementing Baker’s image transformation functionality using Shiota’s described technique . . . would have amounted to the use of a known technique to improve similar devices in the same way, and combining prior art elements according to known methods to yield predictable results.” Id. at 24 (citing Ex. 1003 ¶¶ 133– 134). Additionally, one of ordinary skill in the art “would have been motivated to implement Shiota’s specific image transformation functionality—namely, the use of the non-linear distribution function—as part of the image transformation functionality already contemplated and provided by Baker’s transform processing subsystem,” with a “reasonable expectation of success.” Id. at 26 (citing Ex. 1003 ¶¶ 137–138).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Physics, Optical Engineering, and/or Electrical Engineering and at least five years’ experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 15 (citing Ex. 1003 ¶¶ 24–25). Patent Owner states that solely for purposes of this Preliminary Response, it “does not object to Petitioner’s definition of a [person of ordinary skill in the art].” Prelim. Resp. 13. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,844,990 - PTAB · Apr 13, 2023 · IPR2022-01416 · APJ Garth D Baer · IPR · Institution
Instituted IPR of claims 1–3, 5–7, 10–12, and 14–16 on all petitioned grounds based on a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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(a). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’523 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’523 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “at least a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and at least two years of training or experience in the design of inkjet cartridges and printheads.” Pet. 17 (citing Ex. 1011 ¶¶ 19–20). Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. Prelim. Resp. 19–20. At this stage, we agree with and adopt Petitioner’s description.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction Neither party proposes an express construction for any claim terms. Pet. 17; Prelim. Resp. 20. We determine that no claim terms require express construction for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 5
- BurdenDecided for petitioner
“We disagree with Patent Owner’s arguments. Studer ’708’s focus on venting air towards, rather than away from, its fluid interconnect port does not undermine Petitioner’s assertion that the system would vent in the opposite direction, as well. Petitioner’s expert, Dr. Pond, presents testimony explaining when and how that would be so: “Studer 708’s air vents, air channels, and air spaces are open to the ambient atmosphere for the movement of air both to and from all such spaces.” Ex. 1011 ¶ 109. Further, “a PHOSITA would understand that the direction of this air flow is governed by air pressure inside and outside of the container and necessarily flows both internally and externally.” Id. ¶ 110. With this yet-unrebutted explanation, Petitioner has, at this stage, shown sufficiently that Studer ’708 discloses the claimed internal vent conduit for removing and releasing air, as the challenged claims require.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,938,523 - PTAB · Jul 18, 2022 · IPR2022-00334 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 6–9 under all asserted grounds, finding a reasonable likelihood that claims 6, 8, and 9 would have been obvious over Bird and Ishii.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under § 325(d), we use a two-part 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 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.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a) (2018); see 37 C.F.R. § 42.108. Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’994 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 32, 53–63). Patent Owner does not identify a proposed level of skill in the art that one would have had at the time of the invention of the ’994 patent or identify any specific shortcoming in Petitioner’s formulation. See generally Prelim. Resp. adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except we decline to adopt “at least” as that language is vague and open-ended. Pet. 5. This assessment is consistent with the ’994 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 14
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit the testimony of Petitioner’s expert, Dr. Bederson, that one of ordinary skill in the art “would have understood that Ishii’s photosensors (red) are at the end of each optical waveguides (orange) and the optical waveguides define the extent of the input area,” as we find this testimony consistent with Ishii’s teachings. Compare Ex. 1002 ¶¶ 92, with Ex. 1010 ¶¶ 45, 51, Fig. 9. Dr. Bederson testifies that Ishii’s photosensors “are thus positioned both ‘at least partially circumscribing and immediately proximate’ and ‘outside’ the input area.” Id. In sum, we agree with Petitioner that Bird and Ishii teach a sensor array (i.e., “an X (or Y)-sensor portion 34” slip op. at 26
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,816,994
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.