- Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 8, 2025 · IPR2025-00897 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim966 combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). An inter partes review may be instituted if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the papers, we determine that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’527 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’527 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” and that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Pet. 12 (citing Ex. 1003 ¶¶ 40–43). Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 3–4. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 12. We view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. At this stage, Patent Owner agrees that no terms need construction. Prelim. Resp. 3. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“discloses the preamble and the remaining limitations of claim 1. Pet. 38–64. Petitioner identifies where the combination of Kim, Dahlman, and Kim966 teaches these limitations, supported with testimony from Dr. Mandayam, which Patent Owner does not specifically rebut at this stage. We determine, on this record, that the combination of Kim, Dahlman, and Kim966 teaches the preamble (whether or not limiting) and the remaining undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). We also find that Petitioner has provided sufficiently articulated reasoning, which Patent Owner does not specifically address at this stage, to support combining Kim, Dahlman, and Kim966’s teachings in the manner Petitioner does. Pet. 21–38. 3. Summary In summary, based on the current record, we determine that Petitioner shows a reasonable likelihood that the combination of Kim, Dahlman, and Kim966 renders claim 1 obvious.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,944,527 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 5, 2025 · IPR2025-00903 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim-966 combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’110 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“966 renders obvious this limitation. See Pet. 50–53. With respect to the “first signaling,” Petitioner argues that the combination teaches “the UE [user equipment] receiving a ‘system information block (‘SIB’) (a first signaling) which can include various types of information such as ‘information about the allocation of subframes to uplink/downlink and configuration of the special subframe in the case of TDD [time division duplexing].” Id. at 43 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 21, 65; Ex. 1003 ¶ 100). Petitioner argues that “[b]ecause the SIB assigns time resources or an ‘allocation of subframes for uplink/downlink,’ an SIB would be understood to function as and render obvious as assigning the UE a collection of time intervals (e.g., subframes) or ‘time resource pools.’” Id. at 51 (citing Ex. 1007, 358–62; Ex. 1004 ¶¶ 60–61, 64–78, 84; Ex. 1003 ¶ 113). Petitioner contends that “a POSITA would have understood and found obvious that the first signaling (SIB) is used to determine an ‘allocation of subframes to uplink/downlink’ (a first time resource pool) through an assignment of a Time Division Duplexing (TDD) configuration.” Id. (citing Ex. 1003 ¶ 113). Petitioner submits that “[t]he TDD configuration would identify a series of subframes available for uplink and downlink (a first time” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Patent Owner agrees “that claim construction is not required to resolve any issues.” Prelim. Resp. 2. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Mandayam, Petitioner contends that an ordinarily skilled artisan for the ’110 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology.” Pet. 12. Petitioner additionally contends “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. Patent Owner “utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’110 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,546,110 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00905 · APJ Scott A Daniels · IPR · Institution
The Board instituted review of claims 1–5, 7–11, 13–17, and 19–23 on all asserted grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 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.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’581 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party proposes any claim constructions at this stage. Pet. 19– 20; Prelim. Resp. 2. Where there is no dispute we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“c) Conclusion as to Independent Claim 1 We have considered and find persuasive, at this stage, Petitioner’s arguments and supporting evidence as set forth at pages 31–45 of the Petition with respect to the remaining limitations [1pre]–[1f] and [1i]. Patent Owner does not contest Petitioner’s arguments as to these remaining limitations. Also, Dr. Ding’s testimony is currently unrebutted. Accordingly, we determine that Petitioner has shown a reasonable likelihood that Yeo alone, or the combined teachings of Yeo and TS36 render independent claim 1 obvious.” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,917,581 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00894 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’767 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached
“under 112(f) pointing out the respective functions and structure disclosed in the ’767 patent specification. Pet. 18–20. Patent Owner does not dispute the construction of these terms, stating only “that claim construction is not required to resolve any issues.” PO Resp. 2 (citing Pet. 18–20). Where there is no dispute and our Decision does not turn on any particular construction of these terms, we need not decide at this point whether “receiver module” and “transmitter module” invoke means-plus-function under 112(f). Pet. 13; Prelim. Resp. 5. And, because there is no dispute, we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the” slip op. at 10
- BurdenInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1889, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,462,767 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Dec 2, 2025 · IPR2025-00904 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 6, 11, and 16 would be obvious over Kim and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology. . . . Additional years of experience could substitute for an advanced-level degree (and vice versa). Pet. 4 (citing Ex. 1003 ¶¶ 10, 16, 29–32). Patent Owner relies on Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’904 patent and prior art of record. We adopt Petitioner’s definition of the level of skill at this stage.” slip op. at 8
- BurdenInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1889, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Currently, Petitioner has presented evidence that PUSCH and PUCCH uplink channels were known in Kim to be used for transmitting data, e.g., control information as to channel estimation for demodulation from the UE to the base station. Pet. 40 (citing, e.g., Ex. 1004 ¶ 55). And, on the record before us, Dr. Akl’s testimony is unrebutted that a person of skill in the art would have understood that for other information, such as the UE’s CSI-RS measurement report, “the PUSCH and PUCCH channels present ready-to- station.” Ex. 1003 ¶ 123. Given such evidence, at this early stage of the proceeding Petitioner has shown a reasonable likelihood that a person of ordinary skill in the art would have known to use the PUSCH and PUCCH channels for also transmitting the CSI-RS measurement report to the base station as required by limitation [1.d10].” slip op. at 12
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,626,904 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 5, 2025 · IPR2025-00895 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted challenges after finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have had at least [a bachelor’s degree in] electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. . . . A POSITA would also have familiarity with the 3GPP LTE standards, and would have understood how to search through the available Technical Specifications for implementing RAN technologies. Pet. 21–22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage, with a proposed modification to insert “a bachelor’s degree in” to Petitioner’s statement. Prelim. Resp. 12–13; id. at 12, n.1. We have inserted this proposed modification in brackets in the above block quotation. We are persuaded, on the present record, that Petitioner’s proposal, as modified by Patent Owner, is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s skill definition at this stage.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not propose any claim constructions. See Pet. 11–12; Prelim. Resp. 8. As no terms are in dispute, we determine that no terms require construction at this stage.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION At this stage of the proceeding, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges as to at least one challenged claim. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of all challenged claims of the ’113 patent is instituted with respect to all challenges of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing on the entry date of this Decision.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“measurement value, as Jover teaches.” Id. (citing Ex. 1005 ¶¶ 39–40; Ex. 1003 ¶¶ 115–30). Among other reasons, Petitioner contends that a POSITA would have been motivated to combine “to improve the accuracy and reliability of the beam failure determination.” Id. at 37 (citing Ex. 1003 ¶¶ 115–30). Petitioner further contends that a POSITA would have had a reasonable expectation of success because “it would have been straightforward for a POSITA to implement Jover’s triggering condition in Xia’s method.” Id. at 38 (citing Ex. 1003 ¶¶ 115–30). After considering Patent Owner’s arguments, which we address below, we agree with Petitioner at this stage that the combination of Xia and Jover renders obvious limitation [1e]. Patent Owner first argues that Jover “does not cure the deficiencies of Xia because Jover’s threshold condition for an increase in BER is not used for triggering a transmission of the first and second radio signal.” Prelim. Resp. 20. Just like Xia, Patent Owner contends, Jover discloses no “causality between the threshold being exceeded and transmitting the first and second radio signal.” Id. at 21. This argument does not undermine Petitioner’s showing at this stage because Petitioner relies on Xia, not Jover, for the claimed “triggering the transmission,” or “causality,” as Patent Owner calls it. See Pet. 36–38. That is, Petitioner relies on Jover for the triggering condition and on Xia for the actual triggering. See id. Patent Owner’s argument attacking the references individually is unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of refences.”). Patent Owner next contends that one of ordinary skill in the art would not have combined Xia and Jover “since Jover is directed to the opposite objective of the ’113 Patent or Xia.” Prelim. Resp. 21. That is, Patent Owner asserts, Jover teaches away from the disclosed methods. Id. at 22. Patent Owner explains, “Jover provides no attempt to improve the beam strength, but rather ignores it through beam sweeping or nullif[ies] it, in contrast to the purpose of the ’113 Patent.” Id. at 22–23. At this stage, Patent Owner’s argument is insufficient to undermine” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 10,568,113 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 4, 2025 · IPR2025-00898 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all asserted challenges, finding a reasonable likelihood that claims 1, 6, 11, and 16 would have been obvious over Kim and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’271 patent. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review with respect to all challenged claims and challenges asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1003 ¶¶ 10, 16, 29–32). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill at this stage.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any explicit claim constructions. See Pet. 4–6; Prelim. Resp. 6. As no terms are in dispute, we do not construe any terms. Petitioner discusses constructions proposed by Patent Owner in the Samsung IPR, but Patent Owner does not rely on those constructions here. Pet. 4–6 (citing IPR2023-00747, Paper 14 at 11–13). We therefore do not address them at this stage.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“discloses the claimed “proportional sequence.” Prelim. Resp. 9. First, Patent Owner contends that “indexes of antenna port groups with RSRP measurement values higher than a certain threshold are not a sequence of ratios,” but rather, just an identification of antenna port groups. Id. (emphasis added). We disagree, on this record. The flaw in this reasoning is that the claim does not require the first proportional sequence to be a sequence of ratios. Rather, the claimed “first proportional sequence” merely “corresponds to . . . ratios.” Thus, Patent Owner’s argument that the indexes “are not a sequence of ratios” is not commensurate with the scope of the claim. Petitioner persuades us, at this stage, that the indexes correspond to ratios (e.g., RSRP_n/max(RSRP_i)). See Pet. 32–33.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,951,271 - PTAB · Jun 18, 2025 · IPR2025-00426 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 11–15 over Jarvinen and Fox under § 103 and granted Samsung’s motion to join the T-Mobile IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the T-Mobile IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of the Challenged Claims is unpatentable. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the T-Mobile IPR. See IPR2024-01468, Paper 17.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner’s Motion addresses each of these considerations. Mot. 1–8. According to Petitioner, its “[P]etition challenges the validity of the same claims of the ’868 patent on identical grounds to those in the T-Mobile IPR,” “[t]here are no substantive differences between [Petitioner’s] and the T-Mobile IPR Petitioners’ Petition,” and “[Petitioner] also relies on the same supporting evidence.” Id. at 4–5. Petitioner argues that its “petition will not raise any new issues of unpatentability and will not impose any additional burden on the Board or Patent Owner, or add additional complexity to the case,” and that joinder will not unduly burden or negatively impact the trial schedule. Id. at 6. Further, Petitioner agrees to take an “understudy” role, and “[u]nless and until the current Petitioners in [the T-Mobile IPR] cease to participate in the T-Mobile IPR, [Petitioner] will not assume an active role.” Id. at 7–8. Thus, according to Petitioner, Patent Owner will not suffer prejudice if the two proceedings are joined. Id. at 8. Patent Owner has not disputed the above contentions by Petitioner and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Petitioner has shown that joinder to the T-Mobile IPR is appropriate in this case. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 8
NonePatents in suitUS 9,094,868 - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5
NonePatents in suitUS 8,982,110 - PTAB · May 7, 2025 · IPR2024-01468 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 11–15 based on the asserted obviousness ground over Jarvinen and Fox.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and supplemental briefing, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’868 patent on all relevant grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’868 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1012 ¶ 20), we apply the level of skill set forth above.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner submits that “all claim terms should be given their plain and ordinary meaning” (Pet. 10–11), and “Patent Owner agrees” (Prelim. Resp. 4). In determining at this stage of the proceeding that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim (namely dependent claim 11 in this case), we need not and do not construe expressly any claim terms. Nevertheless, we encourage the parties to submit proposed constructions for the limitation “determining a UE [i.e., User Equipment] environment information,” as recited in dependent claim 11. See Ex. 1001, 49:12–15, 1:40–42 (emphasis added). To the extent that a party proposes that this limitation should have its ordinary and customary meaning, the party should submit and explicitly identify such meaning. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1361 (Fed. Cir. 2008) (“A determination that a claim term ‘needs no construction’ or has the ‘plain and ordinary meaning’ may be inadequate when a term has more than one ‘ordinary’ meaning or when reliance on a term’s ‘ordinary’ meaning does not resolve the parties’ dispute.”). For example, the parties should discuss (a) the meaning and scope of “determining” as used in the subject limitation; (b) the meaning and scope of “environment information” as used in the subject limitation; (c) any relationship or overlap between “environment information” and “link quality positioning information,” as recited in dependent claims 7 and 11 (see Ex. 1001, 48:62–65, 49:12–15); and (d) whether UE “environment information” includes location or orientation of the UE.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends the skilled artisan would have had rational reasons to combine the teachings of Jarvinen and Fox to arrive at the invention of dependent claim 11 (which includes the features of independent claim 1 and dependent claim 7) and would have had a reasonable expectation of success in doing so. Pet. 37–41; see, e.g., id. at 38 (“[The skilled artisan] faced with the problem of estimating a UE’s future link quality at a location would have looked to Fox because Fox solves the problem of estimating future link quality with the exact same information available to Jarvinen.”); Ex. 1012 ¶ 70 (Dr. McClellan testifying that “[a]ll of the data upon which Fox relies is already disclosed and linked together in Jarvinen’s database, and it would have been obvious for [the skilled artisan] to combine Fox’s method of looking up previous link quality to estimate future link quality with Jarvinen’s teachings.”); ¶ 72 (Dr. McClellan testifying that “modifying Jarvinen to perform Fox’s link quality estimation would have constituted a simple substitution of a known element to yield predictable results.”). Patent Owner does not dispute such reasons or expectations at this stage of the proceeding. For the reasons and evidence set forth in pages 37–41 of the Petition, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox to arrive at the invention of claim 11, and to do so with a reasonable expectation of success. c) Summary At this stage of the proceeding and based on the record before us, we are persuaded that Petitioner’s cited evidence provides sufficient rational reasons for purposes of institution to combine Jarvinen and Fox with a reasonable expectation of success, and sufficiently supports Petitioner’s contention that dependent claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox. Thus, for the foregoing reasons and those stated in Petitioner’s preliminary briefing (Pet. 17–47, 50–51, 54), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that claim 11 would have been unpatentable as obvious over the combination of Jarvinen and Fox.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,094,868
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.