- PTAB · Dec 8, 2025 · IPR2025-01064 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all four §103 grounds, finding a reasonable likelihood that Volkswagen would prevail on at least claim 1 over Weese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. Legal Standards — Petitioner’s Burden “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 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 1 Amendments to 35 U.S.C. § 103 enacted by the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) took effect in March 2013. The ’353 patent issued from an application filed in September 2004. See Ex. 1001, code (22). Thus, we apply the pre-AIA version of § 103. grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). B. Legal Standards — Obviousness A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). 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 ordinary skill in the art; and (4) objective evidence of nonobviousness, if made available in the record, which has not happened here. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’353 patent “would have possessed at least a four-year degree in physics, biophysics, medical physics, or a related field, and two years of experience in developing and/or applying computed tomography methods,” wherein “[a]dditional education and professional experience are interchangeable.” Pet. 1; Ex. 1003 ¶¶ 54–55. “Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s formulation of ordinary skill in the art, as it appears to be consistent with the ’353 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Expert testimonyOther
“unpatentable as having been obvious over Weese, including supporting testimony from Dr. Peterson. See Pet. 17–22, 26–83; Ex. 1003 ¶¶ 138–149, 159–257. Patent Owner opposes. See Prelim. Resp. 1–2, 6–7. We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions, as follows.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“(iii) Analysis Based on the present record, we determine Petitioner’s contentions regarding the third step of claim 1 are supported sufficiently by the cited disclosures in Weese and Dr. Peterson’s testimony to justify institution of review. In particular, Weese describes obtaining a plurality of second images of the patient’s internal organs (i.e., PET image I0 in Fig. 1, and PET image I10 in Fig. 3) using a second imaging technique (i.e., PET). See Ex. 1005, Figs. 1, 3, and 6, ¶¶ 47–49, 58–59, 72. In particular, PET image I0 in Figure 1 may be a reconstructed “volume image[]” composed of a plurality of “quasi two-dimensional” “slice images” that, when combined, represent a three-dimensional region inside the patient. Id. ¶¶ 48, 58, 61; see also Pet. 56–57. PET image I10 in Figure 3 may be a similarly reconstructed volume image composed of a plurality of slice images.4 See 4 We do not rely here on Petitioner’s alternative theory that Weese discloses a “plurality” of second images because PET images I0 and I10 are “superposed” images encompassing “several states of motion.” Pet. 58. Ex. 1005 ¶¶ 61, 83–84. Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Also, it appears that PET images I0 and I10 are obtained while also obtaining second movement measurements of the patient’s internal organs using a second sensor system (i.e., motion acquisition unit 12 and motion sensor 15 / S1) which is independent from the PET imaging technique. See Ex. 1005, Figs. 1 and 6, ¶ 65 (“[T]he respiratory motion is determined during the acquisition of the PET projections P1 by means of a respiratory motion sensor provided on the patient and therefrom the frequency function f(r) or, more generally, a state of motion function F1 is derived for the construction of the motion model M2.”). Furthermore, Weese describes how frequency function f(r) is utilized to facilitate image comparison between CT and PET images at common motion states. See id. ¶¶ 31, 49–51, 70–71, 75–77, 79–80, 83; see also Ex. 1003 ¶¶ 214–216 (Dr. Peterson’s supporting testimony). Patent Owner’s sole opposition to Petitioner’s assertions in this regard are limited to whether Weese “obtain[s]” PET images I0 and I10 as recited in claim 1, which we address below. Patent Owner’s two opposing arguments are unavailing, based on the present preliminary record. First, Petitioner relies on reconstructed PET images I0 and I10 as satisfying the “plurality of second images” recited in claim 1, not PET projections P1 from which PET images I0 and I10 are derived. See, e.g., Pet. 56, 58 (“I0 and I10 disclose and render obvious a ‘plurality of second images’ in two ways” — “I0 and I10 may be ‘volume images’ formed using ‘known’ techniques,” and “I0 and I10 are ‘superposed’ PET images encompassing ‘several states of motion,’ which” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,265,353 - PTAB · Dec 3, 2025 · IPR2025-01026 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petition challenges because the Baliarda-543 challenges met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only 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) (2024). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner filed a confidential version of the Petition as Paper 3 and a public version of the Petition as Paper 4. We cite to the public version of the Petition. institute an inter partes review of claims 1–20 in the ’677 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill as of the ’677 patent’s effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 11 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 40. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 17. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’677 patent as well as the asserted references. See, e.g., Ex. 1001, 1:26–6:47, 42:47–44:61, code (57); infra §§ III.E.1–III.E.2.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Although “Dou does not require its ‘diversity antenna architecture’ to provide spatial diversity,” Dou nevertheless requires a wireless device with some type of diversity antenna architecture. See, e.g., Ex. 1013 ¶¶ 14, 17–18, 22–24, 30, 32–34, codes (54), (57), claims 1 and 16. As an example, Dou’s independent claim 1 covering a “wireless device” requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 1. As another example, Dou’s independent claim 16 covering a “wireless device” also requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 16. As yet another example, Dou’s Abstract describes a “wireless device” including a “first diversity antenna” and a “second diversity antenna.” Id. at code (57). Petitioner does not explain how the proposed combination provides anything other than spatial diversity. See Pet. 33–35; Prelim. Reply 1–3; Ex. 1007 ¶¶ 118–124. Based on the current record, we agree with Patent Owner that with Ciais-Quadband’s antenna used for Dou’s two antennas 206 and 208, the two identical quadband antennas would have:” slip op. at 46
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,031,677 - PTAB · Dec 3, 2025 · IPR2025-01027 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition challenges, finding a reasonable likelihood that Baliarda-543 anticipates or renders obvious those claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only 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) (2024). 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).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Regarding spatial diversity, Dou explains that a first internal antenna and a second internal antenna “may be separated by a distance (D) that is no less than the quarter wavelength (>=λ/4) of the lowest frequency.” Ex. 1013 ¶ 24; see Ex. 2010 ¶¶ 35, 44. Consistent with Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency, “a commonly accepted rule of thumb is that at least a quarter-wavelength spacing between antennas is necessary to provide effective spatial diversity.” Ex. 2010 ¶¶ 33, 35, 47. Effective spatial diversity requires sufficient spacing between antennas because that technique “uses multiple antennas to improve signal reliability and performance by mitigating the effects of multipath fading and other interference.” Ex. 2010 ¶ 33. “Multipath fading occurs when a wireless signal propagates along multiple different paths of differing lengths because of interactions with obstacles, resulting in portions of the signal energy arriving at a receiver with different phases slightly offset in time.” Id. Locations insufficiently separated in terms of wavelength “tend to experience similar fading and interference characteristics.” Id. Thus, closely spaced antennas “cannot provide effective spatial diversity.” Id. By providing sufficient spacing between antennas, however, “the likelihood increases that at least one of the antennas will be positioned at a location where the multipath or other interference is relatively low, thereby improving overall signal quality and reliability.” Id. As Patent Owner contends, the proposed combination modifies Dou’s ground plane 310 to replicate Jing’s ground plane with dimensions of 36 mm × 60 mm and limits “the extent of Dou’s ground plane 310 so that it [does] not extend behind Jing’s antenna at 306, just like Dou does not extend it behind antenna 308.” See Pet. 35–36; Prelim. Resp. 20 (quoting Pet. 35); Prelim. Sur-reply 1; Ex. 1007 ¶ 120; Ex. 2010 ¶ 45. The lowest frequency of Jing’s antenna is 900 MHz. Ex. 1011, 2657–58; see Ex. 1007 ¶¶ 118, 154; Ex. 2010 ¶¶ 37, 44. The wavelength (λ) corresponding to a frequency of 900 MHz is 333.3 mm, and a quarter wavelength (λ/4) is 83.3 mm. Ex. 2010 ¶ 44. In the proposed combination, a distance of 60 mm separates the” slip op. at 49
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“To satisfy the written-description requirement, the inventor must have possession of the claimed invention as interpreted to encompass an allegedly infringing product. See Rivera, 857 F.3d at 1319–22; ICU Med., 558 F.3d at 1372–73, 1377–79. For purposes of the written-description requirement, the “invention” is “whatever is now claimed.” Vas-Cath, 935 F.2d at 1564 (emphasis omitted). Based on the current record, and as Petitioner asserts, LTE band 12 was not available for “use with mobile communications” or “use in any cellular communication, let alone LTE or 4G communication,” as of the ’429 application’s December 21, 2006, filing date. See Ex. 1007 ¶¶ 229, 231; Pet. 76–77. For instance, a Federal Communications Commission report adopted on July 31, 2007, notes that the 698-806 MHz spectrum “currently is occupied by television broadcasters in TV Channels 52-69.” Ex. 1045, 1, 3; see Ex. 1007 ¶ 231. The 698-806 MHz spectrum includes LTE band 12 with 698-716 MHz for uplink and 728-746 MHz for downlink. See Ex. 1026, 11 (Table 1); Ex. 1039, 498 (Table 20.1). At this stage of the proceeding, Patent Owner does not dispute that as of July 31, 2007, the 698-806 MHz spectrum was “occupied by television broadcasters in TV Channels 52-69.” See Prelim. Resp. 2–3, 23–30; Prelim. Sur-reply 5. Thus, based on the current record, Petitioner demonstrates a reasonable likelihood that as of the ’429 application’s December 21, 2006, filing date, the ’429 application did not “reasonably convey[] to those skilled in the art that the inventor had possession” of “an antenna configured to send or receive signals in the 698-806 MHz spectrum,” including LTE band 12 that Patent Owner relies on in the Geotab litigation, for “communication with any ‘4G communication standard’ because those frequencies were not usable for any mobile device communications at the time of filing.” See Pet. 78 (emphasis omitted); Ex. 1007 ¶¶ 231, 233–234, 236–237; Ex. 1045, 1, 3; Ariad, 598 F.3d at 1351. Accordingly, based on the current record, Petitioner demonstrates a” slip op. at 63
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,349,200 - PTAB · Nov 19, 2025 · IPR2025-00842 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–10 and 12–20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only 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) (2024). 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). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–10 and 12–20 in the ’084 patent on all challenges included in the Petition.” slip op. at 2
- BurdenDecided for petitioner
“The Board’s rules require that a petition provide “a statement of the precise relief requested for each claim challenged,” including “specify[ing] where each element of the claim is found in the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board’s rules also require that a petition include “a detailed explanation of the significance of the evidence.” 37 C.F.R. § 42.22(a)(2). Contrary to Patent Owner’s assertions, the Petition satisfies these rules. See Pet. 1, 20–119. Under the heading “Statement of Precise Relief Requested,” the Petition provides the following table:” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“earliest priority date “would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 5. Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. at 5–6. Dr. Kyriakakis’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 34–35. For purposes of the Preliminary Response only, Patent Owner relies on the Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 11. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’084 patent as well as the asserted references. See, e.g., Ex. 1001, 1:12–3:62, 36:49–39:8, code (57); infra §§ III.E.1–III.E.2.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,197,084 - PTAB · Nov 19, 2025 · IPR2025-00843 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–12, 14, and 16–20 on all four grounds, finding a reasonable likelihood that claim 1 is obvious over Li and Liao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2025). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a “person of ordinary skill in the art (“POSITA”) at the ’582 Patent’s earliest priority date (January 5, 2019), would have had a Bachelor’s degree in electrical or computer engineering, or a comparable field of study, plus approximately two to three years of professional experience with acoustic technology.” Pet. 6 (citing Ex. 1003 ¶¶ 34–36). Petitioner notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. At this stage, Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner relies on the definition proposed by Petitioner because Petitioner has not shown that any challenged claims are unpatentable given this level of skill.” Prelim. Resp. 10. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of ordinary skill in the art, because we are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’582 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of ordinary skill in art).” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“proposed combination of Li and Liao is based upon improper hindsight, because Patent Owner does not point to sufficient evidence of record that shows combining the teachings of the cited references in the manner proposed by the Petitioner would have been “uniquely challenging or difficult for one of ordinary skill in the art” or would have “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Li teaches away from Petitioner’s proposed modifications to add a plug at each end of connecting component 113. See Prelim. Resp. 39, 41. A “reference does not teach away” if “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Li expresses a general preference for connecting first housing 111 and second housing 112 to the two ends of first elastic metal wire 1131 in connecting component 113 by injection molding. Ex. 1004 ¶¶ 29, 35, dependent claims 2 and 7. For example, Li explains that “[o]ptionally, the first housing 111 and the second housing 112 are fixedly connected to both ends of the first elastic metal wire 1131 by injection molding.” Id. ¶ 29. Li does not “criticize, discredit, or otherwise discourage” using a plug to connect a housing to connecting component 113. See, e.g., id. ¶¶ 29, 35. Instead, Li discloses using plugs to mechanically connect components, i.e., to connect rear hook assembly 12 to “the first housings 111 of the two ear hook assemblies 11.” Ex. 1004 ¶ 58, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 122. Li similarly discloses using mechanical connectors comprising a clamping portion that engages with a locking portion to connect components, e.g., to “fix the first housing 111 and the third housing 114 together” and “fix the second housing 112 and the fourth housing 115 together.” Ex. 1004 ¶¶ 44–45. Li identifies these mechanical connectors as alternatives to adhesive bonding and “fasteners such as screws.” Id. ¶ 44; see id. ¶ 59 (identifying plugs as alternatives to “screw fixation”). Hence, we determine Li discloses a variety of ways to connect components in a bone conduction earphone but does not appear to “criticize, discredit, or otherwise discourage” any of those ways. See, e.g., Ex. 1004 ¶¶ 29, 35, 44–45, 58–59, Figs. 2, 9; see Ex. 1003 ¶¶ 57, 117, 121.” slip op. at 45
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,310,582 - PTAB · Oct 16, 2025 · IPR2025-00702 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 4, 5, 16, 17, and 19 on all asserted grounds after finding a reasonable likelihood that claim 4 was obvious over Nakamura and Benini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’270 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’270 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field, with at least two years of relevant experience working with VR [virtual reality] and AR [augmented reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 27 (citing Welch Decl. ¶¶ 88–90, 91). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(citing Phillips, 415 F.3d at 1312–17). “[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe expressly only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner contends that “[t]his Petition establishes the prior art meets each of the claim limitation[s] under any reasonable construction,” and, “[t]hus, no express construction is required.” Pet. 27–28. Patent Owner’s Preliminary Response does not contain a separate claim construction section. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. Setting an origin location Limitation 4.a.1 recites, “a first manual input for setting a[n] origin location setting for a location reference for gameplay.” Ex. 1001, 24:44–46. Patent Owner argues that Petitioner has not shown that this limitation disclosed or rendered obvious by the relied-on references. See Prelim. Resp. 29. Petitioner contends that Nakamura teaches the user’s manual selection of a starting point of a game. Pet. 38–40 (citing, inter alia, Welch Decl. ¶¶ 147–148; Ex. 1007 ¶¶ 9, 35–36, Fig. 5); see also id. at 62 (for this Ground 2, referencing the contentions made for Ground 1). Petitioner further contends that “[a] POSITA would have also recognized that the initial position setting provides a location reference for gameplay.” Id. at 63. For this Ground 2, Patent Owner incorporates by reference its arguments regarding Ground 1 based on Cheok, Nakamura, and Foxlin077. See Prelim. Resp. 29. Patent Owner argues that “Nakamura’s position icon 113 [displayed at a virtual location appropriate for the initial position] represents a virtual character’s virtual location in the virtual world, rather than a user’s physical location, and has no relationship to the physical location.” Prelim. Resp. 24 (citing Ex. 1038 ¶¶ 36, 38). According to Patent Owner, “establishing a physical origin location as a location reference is critical to key features of the patented system.” Id. at 25 (citing Section III of the Preliminary Response). Patent Owner’s argument is not commensurate in scope with the language of claim 4, which recites an input for setting “a[n] origin location,” not “a physical origin location.” In support of its arguments, Patent Owner relies on the Specification, stating, for example, that “[t]he ’270 patent’s system ‘prompt[s] a user to” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,967,270 - PTAB · Oct 15, 2025 · IPR2025-00703 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1, 4, 11, 16, 30, and 102 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Cheok and Foxlin077.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. As an initial matter, the claim does not recite “a bounded physical play space.” Rather, the claim recites “a physical playfield.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or similar field, with at least two years of relevant experience working with VR [Virtual Reality] and AR [Augmented Reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Welch ¶95; see also ¶¶94. Pet. 17. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically argues that “[t]here is no motivation to modify Cheok’s method for allegedly determining the direction of gameplay to include a prompt requesting a manually provided direction; it already allegedly determines direction by the user’s simple movement, which the user will already do while playing the game, a much more efficient process.” Id. at 36 (citing Pet., 29–36). According to Patent Owner, “[a]dding a prompt requesting manual user input for a direction of gameplay has drawbacks to user experience; it slows down the beginning of gameplay and complicates the overall system, removing the natural feel of playing without having to set up the game, when Cheok already works for its intended purpose.” Id. at 36–37. We do not find these arguments persuasive at this stage. Even if Patent Owner is correct that the proposed combination would be less efficient or slow down the beginning of play, that there may be drawbacks from the proffered combination of teachings does not necessarily show a lack of motivation to combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). And, even if the proposed combination would not have been the best choice, that does not necessarily mean that it was non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch testifies, for example, that “[a] POSITA would have . . . recognized it would be beneficial to improve the Cheok system by implementing a similar inertial sensor initialization/reinitialization process [as in Foxlin077] to address any potential accuracy or user experience issues associated with drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual environment application like the Cheok system, in which a user must interact with the real environment, a POSITA would have understood that Foxlin077’s manual reinitialization process would be beneficial to address accumulated drift when an automatic drift compensator component is not sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is unrebutted with evidence, as opposed to mere attorney argument.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2023). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’821 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’821 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,033,821 - PTAB · Jul 28, 2025 · IPR2025-00308 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claim 1, finding a reasonable likelihood it would be shown obvious over Darnell and Kim; it did not reach the Dasgupta and Kim ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in computer science and two years’ experience in cloud computing or a similar field, or a master’s degree in computer science or similar field.” Pet. 8 (citing Ex. 1002 ¶¶ 1–55, 119–122). Patent Owner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in electrical engineering or computer science, and approximately 3 years of experience working with content management systems and graphical user interfaces; or a more advanced degree such a master’s or doctorate with proportionally less work experience.” Prelim. Resp. 14. Petitioner and Patent Owner’s descriptions of a person of ordinary skill are similar, although Patent Owner’s proposal is slightly more experienced. Both appear to be reasonably consistent with the subject matter of the ’068 patent. For purposes of this decision, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶ 121; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’068 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to a user.” Pet. 15 (citing Ex. 1002 ¶ 390–391). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for a user,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pet. 15–16 (citing Ex. 1002 ¶ 391; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 16 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 391). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the user interface based on those traits in Darnell’s feed aggregation system. Id., ¶ 392. A POSITA would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any user device (e.g., phone, computer, tablet, etc.) instead of only on a single user device. Pet. 16–17 (citing Ex. 1002 ¶¶ 392–395). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell and Kim to be compatible because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified user interface displayed on a user device. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 396-397. Thus, a POSITA would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of the user device based on Darnell’s teachings.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,068 - PTAB · Jul 28, 2025 · IPR2025-00307 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–18 on all four § 103 grounds, finding a reasonable likelihood that claim 1 would have been obvious over Darnell and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Settled expectationsDecided for patent owner
“or “Petition”), to institute an inter partes review of claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”). On March 28, 2025, the Board issued a notice extending the deadline for discretion briefing pursuant to the bifurcated discretionary denial review process that applies to proceedings with a patent owner preliminary response due after March 26, 2025.1 Paper 10. On May 1, 2025, RazDog Holdings LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”). Patent Owner filed a request for discretionary denial. Paper 11. Petitioner filed an opposition to Patent Owner’s request for discretionary denial. Paper 13. On May 16, 2025, the Acting Director issued a decision denying Patent Owner’s request for discretionary denial and referring the petition to the Board. Paper 18.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’658 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to users.” Pet. 13 (citing Ex. 1002 ¶ 146). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for users,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pat. 13–14 (citing Ex. 1002 ¶ 146; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 14 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 146). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the UI based on those traits in Darnell’s feed aggregation system. Id., ¶147. POSITAs would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any device (e.g., phone, computer, tablet, etc.) instead of only on a single device. Pet. 14–15 (citing Ex. 1002 ¶¶ 147–150). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell’s and Kim’s compatibility because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified UI displayed on user devices. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 151–152. Thus, POSITAs would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of user devices based on Darnell’s teachings.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,729,658 - PTAB · Jul 7, 2025 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–18 because Tesla showed a reasonable likelihood that claims 1–18 would have been obvious over Wallen and Berggren.
RulingsInstitution decision- Director reviewOther
“Memorandum (“Memorandum”) issued on March 26, 2025, Patent Owner filed its Discretionary Denial Brief on April 7, 2025. Paper 6. Petitioner filed its Opposition Brief on May 27, 2025. Paper 8. On June 13, 2025, Acting Director Stewart issued a decision determining that discretionary denial of institution is not appropriate in this case and referring the Petition to us for merits and other non-discretionary statutory considerations. Paper 9.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the asserted prior art. slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“establishes sufficiently for the purpose of institution that the combined teachings of Wallen and Berggren teach or suggest all of the limitations recited in claim 1.” slip op. at 14
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,206,670
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.