- PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized 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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,822,165 - PTAB · Oct 31, 2025 · IPR2025-00873 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–14 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Gilmour, Merriman, and Frauenhofer.
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 at least one challenged claim is unpatentable. Thus, for reasons explained below, we institute inter partes review of claims 1–14 of the ’445 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1002 ¶¶ 30–34). Petitioner asserts that the POSA’s education “could include a bachelor’s degree in business or economics, with an emphasis on the use of technology in marketing or advertising” or “similar knowledge gained through actual work experience.” Id. Alternatively, the POSA’s education could include “a bachelor’s degree in computer science or equivalent industry experience, and work with a team that includes software engineers.” Id. According to Petitioner, the POSA “could also have qualified with more formal education and less technical experience, or vice versa.” Id. 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 ’445 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. 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) (2020). 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. Petitioner “applies plain-and-ordinary meaning to all terms.” Pet. 20. We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 8 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner recognizes that the combination of Gilmour and Merriman alone “does not disclose that the profile owner computer automatically 17 selects a media property entity of a plurality of media property entities based on a comparison of the profile information with a plurality of stored requests from the plurality of media property entities.” Id. at 42. To address this deficiency, Petitioner asserts that Frauenhofer “discloses automatically selecting a user of a plurality of users based on a comparison of content with the plurality of stored requests from the users.” Pet. 44 (citing Ex. 1014, 3:12–19). Petitioner argues that it would have been obvious to combine Frauenhofer’s teachings with those of Gilmour and Merriman to arrive at the claimed method. Id. According to Petitioner a POSA “would have been motivated to make this combination because it would conveniently allow Gilmour’s requesting entities (which are media property entities) to make initial requests to the profile service provider, and then automatically receive profiles matching the requests on an ongoing or periodic basis.” Id. at 45. (citing Ex. 1010, 41; Ex. 1011, 39–40, 51; Ex. 1012 ¶ 25; Ex. 1013, 3:20– 23; Ex. 1002 ¶ 155).” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,984,445 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · Apr 22, 2025 · IPR2024-01488 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds, finding a reasonable likelihood that claims 1, 2, 4, 6, 8, 9, 11, 13, 15, 16, 18, and 20 would be obvious over Sutardja …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” Considering the Petition as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’281 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’281 patent on all grounds stated 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 (“POSITA”) “would have had a minimum of a bachelor’s degree in electrical engineering, computer engineering, physics, or a similar field, and approximately two years of industry or academic experience in a field related to microelectronic architecture design and development, including experience with power management techniques for multicore processors.” Pet. 4 (citing Ex. 1022 ¶¶ 49–51). Petitioner further states that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’281 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that “no terms require construction to resolve this Petition.” Pet. 4. Petitioner also states that “[r]elated litigations may involve controversies not presented here that require construction.” Id. We determine that no express construction of any claim term is necessary for purposes of 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We have reviewed Petitioner’s evidence and explanations, and based on the current record at this stage of the proceeding, find that Petitioner sufficiently establishes that an ordinarily skilled artisan would have been motivated to combine Sutardja and Mathieson with a reasonable expectation of success.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,740,281 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01404 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18, finding a reasonable likelihood that claim 1 would have been obvious over Cooney.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’609 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“of oval-shaped void 25 in Cooney is in a “pinched off region” as claimed. Petitioner explains that the void is formed as a consequence of the chemical vapor deposition process of the conductive filler, and specifically, that the shape of the void will reflect the shape of the walls of the via. Pet. 35 (citing Ex. 1005 ¶ 59; Ex. 1002 ¶¶ 167–169). Thus, according to Petitioner, the void’s shape will be similar to the torpedo shape of the via—tapering out on the top half and tapering in on the bottom half. Id. In our view, Petitioner provides a technical reason, supported by testimony, why the bottom of the void will be in the identified pinched-off region of the torpedo-shaped via in Cooney. See id. at 35–38. Patent Owner’s arguments do not address Petitioner’s technical analysis and instead focus on the precision of Cooney’s drawings. See Prelim. Resp. 8–12. Given Petitioner’s technical analysis, however, the precision of Cooney’s drawings is not determinative. Further, Patent Owner’s argument that “void 25 is localized to [the middle portion of the via] and sealed off from the tapered . . . section” also misses the fact that the middle portion of the via still has the torpedo shape (it is the inflection point of where it goes from wider to smaller). See id. at 10–11. With respect to the void in Cooney being in a “pinched off region,” we determine that Petitioner has made a sufficient showing on this preliminary record.” slip op. at 16
- Skill levelSkill level board ownDecided for petitioner
“A person of ordinary skill in the art (POSITA) at the time of the purported invention of the ’609 patent (October 7, 2011) would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems. Additional work or research experience can substitute for less or different education, and vice versa. Pet. 9–10 (citing Ex. 1003 ¶¶ 72–74). Patent Owner uses Petitioner’s proposed level of skill in the art. Prelim. Resp. 6. We use the parties’ agreed definition for purposes of this Decision because it appears consistent with the level of skill reflected in the prior art and ’609 patent.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,147,609 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Apr 4, 2025 · IPR2024-01402 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–19 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Okashita.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“petition and in the parallel proceeding. After the Preliminary Response was filed, Petitioner submitted a stipulation stating that it will not pursue, in the District Court Litigation, any ground that was raised or could have reasonably been raised in this proceeding. Paper 8, 1. Petitioner’s stipulation aligns with the stipulation relied on by the Board in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential). Patent Owner argues that we should reject any “late” Sotera stipulation. Prelim. Resp. 47–48. The only authority cited for this argument are Board decisions concerning stipulations filed after a Decision on Institution was entered. Id. As Petitioner’s stipulation was filed prior to this Decision being entered, it is not “late” under the authority Patent Owner cites, and, thus, on this record, we decline to reject Petitioner’s stipulation. See NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (Sept. 7, 2022) (precedential) (holding that the only appropriate time for a petitioner to offer a stipulation is prior to the Board’s decision on institution) cited in CAPJ Memo, 2 n.1. In Sotera Wireless, the Board found that a stipulation such as the one proffered here by Petitioner addressed “concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions” and “ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, IPR2020-01019, Paper 12 at 19. For these reasons, we find that this factor weighs “strongly in favor of not exercising discretion to deny institution.” Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’886 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We begin our analysis by pointing out that neither party offers a claim construction of “cascaded transistors,” though both parties reference the understanding of the term set forth by Petitioner’s declarant. Although we do not reject Petitioner’s declarant’s definition, we also do not adopt it as the meaning of “cascaded transistors” at this time, absent the parties’ proposal that we do. According to the ’886 patent, transistors simply “coupled in series” are “cascaded.” Ex. 1001, 6:50–51. We use this disclosure to guide our analysis. Reviewing Figure 7 of Okashita, we see a configuration of transistors 1 and 2 that appears, on this record, to be coupled in series. When transistor 2 acts as a shunt for transistor 1, i.e., when the threshold voltage of transistor 2 has been overcome, then current flows through transistor 1, through transistor 2, and then to ground. Ex. 1004, 7:15–17. At this preliminary stage, this is a sufficient showing that Okashita’s transistors are “cascaded” as contemplated by the ’886 patent.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“intervening silicon layer between the source/drain junctions and the buried silicon oxide layer. Pet. 60. Petitioner asserts that a person of ordinary skill in the art would have had a reason to take advantage of Okashita’s design: (1) to “reduce the operating temperature of the transistors,” which will “enhance their performance and reliability,” (2) to “prevent leakage of radio frequency signals,” and (3) to “minimize the effect of mismatch.” Id. at 60– 63. Patent Owner’s first argument is that a person of ordinary skill in the art would not look to Okashita because Okashita “is entirely focused on keeping AC and DC grounds separate,” something Patent Owner argues “is not present in Burgener.” Prelim. Resp. 37. It is not clear to us on this record that Patent Owner is correct that keeping AC and DC grounds separate is not present in Burgener, given that Burgener has both AC signals coming in from ports A–D, as well as digital control signals coming in from the control ports (e.g., 1708 and 1718, for port A). See Ex. 1006 ¶¶ 100–101 (discussing RF ports and control signals). In any event, even if the particular problem solved by Okashita is not one of the problems articulated in Burgener, that does not mean that the teachings of Okashita cannot be applied to Burgener. KSR, 550 U.S. at 420 (“any need or problem known in the field . . . and addressed by the patent can provide a reason for combining the elements in the manner claimed”). Petitioner has asserted three reasons, mentioned above, why a person of ordinary skill in the art would look to improve Burgener with Okashita’s teachings, and Patent Owner does not appear to contest them at this time.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - PTAB · Mar 26, 2025 · IPR2024-01345 · APJ Andrew L Nalven · IPR · Institution
The Board instituted IPR of claims 1–12 on all asserted grounds after finding a reasonable likelihood that claims 1, 2, 4–6, 8–10, and 12 are obvious over Lee and claims 3, 7, and 11 over …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’968 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We agree that the lack of the word “means” recited in claims 1 and 9 creates a rebuttable presumption that § 112(6) does not apply. Williamson, 792 F.3d at 1348. “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112[(6)] will apply if the challenger demonstrates that the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word ‘means,’ the claim limitation uses a similar ‘nonce word that can operate as a substitute for ‘means’ in the context of § 112 [(f)].’” MTD Products, Inc. v. Iancu, 933 F.3d 1336, 1341 (Fed. Cir. 2019) (quoting Williamson, 792 F.3d at 1350). Patent Owner argues that “[a] general-purpose computer, i.e., a ‘controller,’ fails to recite sufficiently definite structure for performing the DSC’s claimed function.” PO Sur-Reply 3–4. Petitioner responds that the term “controller” has previously been found to not invoke § 112(6) because it is understood as having a definite meaning of structure. Pet. Reply 1–2 (citations omitted). Petitioner is correct that the Board and district courts have in some cases found a “controller” to recite sufficient structure. On this preliminary record, we are not persuaded that the evidence is sufficient to establish that the term “designation software controller” fails to recite sufficiently definite structure and overcome the presumption that § 112(6) does not apply. At this juncture, neither party has provided sufficient evidence as to how the claimed “designation software controller” would reasonably be understood by persons of ordinary skill in the art. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). In addition, regardless of whether “designation software controller” alone connotes structure, the claim language that follows the term “designation software controller” appears to provide structure. Specifically, the claim language appears to include a step-by-step procedure, namely 1) keep the information in memory in response to a termination of viewing; and 2) designate the succeeding part of the digital moving image contents when the viewing starts again. See Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012) (“Even described ‘in prose,’ an algorithm is still ‘a step-by-step procedure for accomplishing a given result.’”); Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed. Cir. 1997) (“where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format”). Accordingly, for purposes of this decision, we do not construe the claimed “designation software controller” as a means-plus-function limitation. No further construction of this term is necessary for purposes of this decision. During trial, the parties may provide further briefing on this issue.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with television and digital display systems, distributed multimedia communications, and networked computer systems.” Pet. 3–4 (citing Ex. 1002 ¶ 48). Patent Owner does not challenge Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the specification and asserted prior art.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“viii. Conclusion as to Claim 1 Based on the current record, we are persuaded by Petitioner’s showing for limitations 1[a] through 1[e]. Accordingly, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious over Lee.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,948,968 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Mar 24, 2025 · IPR2024-01405 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” Considering the Petition, the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’826 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’826 patent on all grounds stated in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyConn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068–69 (Fed. Cir. 2012)). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems” and “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 23 (citing Ex. 1003 ¶¶ 73–74). Patent Owner agrees with Petitioner’s proposed level of ordinary skill in the art for the purposes of the Preliminary Response. Prelim. Resp. 16–17. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’826 patent and the prior art.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,245,826 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCInstitutedPTAB · Mar 24, 2025 · IPR2024-01403 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 22–23 (citing Ex. 1003 ¶ 63). For purposes of the Preliminary Response, Patent Owner applies Petitioner’s level of ordinary skill in the art. Prelim. Resp. 7. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’673 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Petitioner nor Patent Owner proposes any claim construction. Pet. 19; Prelim. Resp. 8. Based on our review of the record, we determine that no express construction of any claim term is necessary for purposes of 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“For a prior-art reference to qualify as analogous art, the reference must either be in the field of the applicant's endeavor or reasonably pertinent to the problem with which the inventor was concerned. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality of the circumstances,’ –– in other words, common sense––in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA 1979))). Further, in Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010), the Federal Circuit directed that the scope of analogous art is to be construed broadly. Id. at 1238 (citing KSR Intern’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that an ordinarily skilled artisan “would have been motivated to avoid the overfilling of trench sides in Yin’s deep isolation trench that would result from using unchamfered corners by instead using chamfered corners.” Pet. 25 (citing Ex. 1003 ¶ 85). According to Petitioner combining Koshimizu and Yin “is nothing more than using a known method (chamfering a deep isolation trench) that yields a known result (e.g., a reduction in necessary isolating material in said trench.).” Id. (citing Ex. 1003 ¶ 85). Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because “[c]hamfering the outer corners of Yin’s trench would have required nothing more than an adjustment to the mask pattern that defines the outline of the trench to have chamfered corners instead of square corners.” Pet. 26 (citing Ex. 1003 ¶ 89). Petitioner further contends that “[i]t was also known in the art that 135˚ angle corners (i.e., chamfered), rather than 90˚ angle corners (i.e., unchamfered) were one solution to improve problems associated with trench refill.” Id. at 26–27 (citing Ex. 1003 ¶ 89). Patent Owner does not directly address Petitioner’s motivation to combine and reasonable expectation of success arguments. Prelim. Resp. 11–15. We have reviewed Petitioner’s contentions and evidence and find, based on the present record at this stage of the proceeding, that Petitioner sufficiently establishes that an ordinarily skilled artisan would have had a motivation to combine Yin and Koshimizu with a reasonable expectation of success.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,772,673 - PTAB · Mar 19, 2025 · IPR2024-01358 · APJ William V Saindon · IPR · Institution
The Board instituted IPR of claims 1–24, finding a reasonable likelihood that claim 1 would have been obvious over Jüschke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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.” For the reasons provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’704 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “deployment scenarios” Claim 1 recites a machine learning model that “includes model parameters associated with values corresponding to one or more deployment scenarios.” Ex. 1001, 14:23–25. The ’704 patent provides a list of “deployment scenarios” that includes “a cellular base station . . . in an in-line mode.” Id. at 2:39–41; see also id. at 2:38–65 (entire list). The “in-line mode” is shown in Figures 6A and 7A, in which machine learning model 103 is placed “between an input 601 and an amplifier 603.” Id. at 10:38–42, 10:47–50. Figure 6A depicts the in-line mode and is reproduced below:” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“associated with the base station as claimed, focusing on the words “associated with.” Prelim. Resp. 26–28. Patent Owner argues that Petitioner’s position is that the model is “implemented within” the base station, but that the claim requires the model to be “associated with” the base station. Id. at 27. On this record, with no claim construction offered, we fail to see how Patent Owner construes a model “implemented within,” i.e., used in, a base station to not also be “associated with” the base station. That is, it would seem that a model used in a base station is associated with that base station. Accordingly, we do not find Patent Owner’s argument persuasive on this preliminary record.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,018,704 - 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
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.