- Reolink Innovation Inc. / Shenzhen Reolink Technology Co., Ltd. v. Throughtek Co. Ltd.Adverse judgmentPTAB · May 19, 2026 · IPR2025-01327 · APJ Sheila F Mcshane · IPR · Adverse judgment
The Board entered adverse judgment against Throughtek on claims 1–19 after finding it abandoned the contest by failing to file mandatory notices or respond to the show-cause order.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“The Order to Show Cause explained that under 37 C.F.R. § 42.73(b), “[a]ctions construed to be a request for adverse judgment include . . . [a]bandonment of the contest.” Paper 8, 3. The Order to Show Cause also explained that failure to participate in a proceeding, such as failure to file mandatory notices as required under 37 C.F.R. § 42.8, may be considered abandonment of the contest and result in adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b). Id. (citing Cellpak, Inc. v. Mambate USA Inc., IPR2021-00007, Paper 4 at 2 (PTAB Mar. 23, 2021)). The Order to Show Cause gave Patent Owner ten calendar days to show cause why adverse judgment should not be entered against it. Id. Patent Owner did not respond to the Order to Show Cause. More than ten calendar days have elapsed since the date the Order to Show Cause was entered, and Patent Owner has not filed mandatory notices. In view of Patent Owner’s failure to file mandatory notices within the specified time period, we determine that Patent Owner has abandoned the contest. Pursuant to 37 C.F.R. § 42.73(b)(4), we construe Patent Owner’s abandonment of the contest as a request for adverse judgment. Under these circumstances, we determine that entry of judgment against Patent Owner is appropriate.” slip op. at 3
NonePatents in suitUS 9,727,655 - PTAB · Dec 18, 2025 · IPR2025-01071 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–7, 12, 14, and 25 because Petitioner showed a reasonable likelihood of prevailing on its § 103 obviousness challenge over Bassompiere.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, 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.” 35 U.S.C. § 314(a). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 1–7, 12, 14, and 25 of the ’687 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 13:20– 23. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 25–27. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). 2. “predicted axial accelerations” Petitioner does not propose a construction for “predicted axial accelerations,” but, in the concurrent California Litigation, contends that it should be accorded its “plain and ordinary meaning.” Ex. 2007, 3. In subsequent briefing that will be discussed more fully below, Petitioner asserts that its declarant, Dr. Sarrafzadeh, “applied the ‘plain and ordinary’ meaning for all claim terms, including the ‘predicted axial accelerations’ term,” in this proceeding. Paper 14, 1. Petitioner also submits in that briefing that “the term ‘axial acceleration’ (whether predicted or measured) . . . ordinarily encompasses three types of acceleration,” i.e., “linear, centrifugal, and gravitational.” Id. at 3, 4. Patent Owner contends that “predicted axial accelerations” should be construed as “[g]ravitational acceleration along the electronic device’s axes derived from the current quaternion.” Prelim. Resp. 18. Patent Owner asserts that “[t]he claims and specification consistently define ‘predicted axial accelerations’ as gravitational accelerations along the device’s axes at time T, derived from the current quaternion.” Id. (citing Ex. 1001, claim 1, 17:18–30, 17:45–52). Patent Owner further submits that “because ‘predicted axial accelerations’ are computed from the current quaternion they only contain gravitational accelerations along the device’s axes.” Id. at 19 (citing Ex. 2023 ¶ 23). Here too, the threshold question of institution can be decided without” slip op. at 14
- BurdenDecided for petitioner
“We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 32. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. Pet. 33–34. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 29
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 11,698,687 - PTAB · Dec 17, 2025 · IPR2025-01023 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR on all asserted grounds against claims 1, 3, 7, and 9, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Conclusion as to Claim 1 Having reviewed the record and the parties’ arguments, we determine that Petitioner has a reasonable likelihood of prevailing with respect to claim 1, and therefore has satisfied the threshold requirement for institution of inter partes review on the basis of Ground 1. 3. Claims 3, 7, and 9 Petitioner contends that Bassompiere teaches the limitations of claim 3, 7, and 9, and supports its contentions with citations to Bassompiere and to Dr. Sharrafzadeh’s declaration. Pet. 57–63. At this stage of the proceeding, Patent Owner does not raise any arguments specifically directed to these claims. “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). We must “either (1) institute as to all claims challenged in the petition and on all grounds in the petition, or (2) institute on no claims and deny institution.” CTPG at 5–6, 64; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (stating a decision to institute is “a simple yes-orno institution choice respecting a petition, embracing all challenges included in the petition”). Thus, because we have decided to grant institution on Ground 1 with respect to claim 1, we must do the same for claims 3, 7, and 9.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer any reason why we should deviate from the Board’s determinations in the prior IPRs that one of ordinary skill in the art would have had knowledge of Kalman filters and quaternion mathematics. Nor are we aware of any such reason. On the contrary, the Board’s prior determinations are consistent with the level of ordinary skill reflected by prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Bassompiere, for example, teaches using a data merging algorithm that is, “[a]dvantageously,” extended Kalman filtering. Ex. 1006, 4:17. Bassompiere also teaches using quaternions to determine a device’s pitch and roll about a horizontal reference frame. Id. at 6:3–8, 20:10–21:1. Nasiri teaches that quaternions can be used to represent a device’s “orientation in space.” Ex. 1008, 30:27– 30. Patent Owner argues that Dr. Sarrafzadeh’s testimony regarding the level of skill in the art in this proceeding contradicts his testimony in the prior IPRs, which did not include knowledge of Kalman filters and quaternion mathematics in his definition of the level of ordinary skill in the art. Prelim. Resp. 24–26. Patent Owner asserts that this contradiction “undermin[es] his credibility.” Id. at 26. We disagree. The testimony Dr. Sarrafzadeh provided in the earlier IPRs obviously preceded the Board’s determinations in those proceedings that, on the whole record, including the testimony of then-Patent Owner’s declarant, the level of ordinary skill included knowledge of Kalman Filters and quaternions. Dr. Sarrafzadeh’s testimony in this proceeding reasonably aligns with those determinations. Accordingly, for the above reasons, we adopt Petitioner’s definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s characterization. The teaching to use quaternions instead of Euler angles comes from Bassompiere, not Dr. Sarrafzadeh. See Ex. 1006, 20:10–11 (“A first variant embodiment consists in replacing the angles of torsion θ and ψ by a quaternion formulation of the same torsion.”). Rather than supplying a missing limitation, we understand Dr. Sarrafzadeh to be explaining how a person of ordinary skill in the art would have implemented Bassompiere’s teaching to use quaternions instead of Euler angles given that person’s knowledge of quaternion mathematics. Patent Owner also argues that “switching from Euler angles to quaternions is not a routine substitution but requires the reengineering of the EKF.” Prelim. Resp. 28. Patent Owner similarly contends that Dr. Sarrafzadeh “devotes nearly twenty pages of his declaration to rewriting Bassompiere’s Euler-based equations ‘in quaternion form,’ and explaining how to convert them back to Euler angles,” and notes that “[a]s other researchers in the field have confirmed, ‘[w]hile implementing orientation tracking using quaternions provides advantages like avoiding gimbal lock, it is significantly more complex than the Kalman filer using Euler angles.’” Prelim. Resp. 32–33 (citing Ex. 1002, 31–51; quoting Ex. 2027, 1). Patent Owner thus contends that replacing Euler angles with quaternions “is not a ‘trivial’ substitution.” Id. at 33. But Petitioner does not appear to be arguing that replacing Euler angles with quaternions would have been “trivial” or simple, only that doing so was taught by Bassompiere and within the knowledge and capabilities of a person of ordinary skill in the art. We determined above that a skilled artisan had knowledge of extended Kalman filters and quaternion mathematics such knowledge, and we are required to consider the knowledge and capabilities of a person of ordinary skill in our analysis. Further, at this preliminary stage, Patent Owner’s assertion that the Euler angle/quaternion switch would not have been a routine substitution is supported only with attorney argument, which is entitled to no weight. Icon Health & Fitness, Inc. v. Strava, Inc. 849 F.3d 1034, 1043 (Fed. Cir. 2017). As such, it does not outweigh Dr. Sarrafzadeh’s contrary testimony. See, e.g., Ex. 1002 ¶ 56.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties agree that the claimed “spatial reference frame” is associated with a device, has its origin at the same point in the device, and has axes that are always fixed with respect to the device. The only disagreement is whether that device is a “3D pointing device” or an “electronic device.” The Specification indicates that “electronic device” encompasses 3D pointing devices as well as, e.g., smartphones and navigation equipment, and therefore is the broader term. Ex. 1001, 8:35–39. At this stage of the proceeding, we determine that the threshold question of institution can be decided under either construction, because Patent Owner does not dispute that the primary asserted reference, Bassompiere, teaches a “spatial reference frame” associated with a 3D pointing device. Pet. 30–31. Therefore, at this stage of the proceeding, we decline to resolve the parties’ dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those [claim] terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,852,846 - PTAB · Dec 12, 2025 · IPR2025-01327 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of prevailing on the Schwan-Lee and Schwan-Lee-Strickland obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’655 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent, and two years of work experience with network devices and communication technologies. EX1003, ¶¶17–19. Additional education might compensate for less experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 17–19).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The ’655 patent Specification states that: The topology data table 21 of the online server 20 is mainly recorded with a link data 49 between each of the P2P devices 41– 46 within the P2P device community. The link data 49 refers to the connection relationship between the P2P devices 41–46, which includes, but is not limited to, the connection structure, connection data and/or locations of connection. Ex. 1001, 4:51–57. On this preliminary record, we agree with Petitioner that the term “link data” is a “connection relationship between the P2P devices.” This meaning is consistent with the ordinary meaning of the term within the context of the claim, that is, “link data” means data on the links (connections) between each of the P2P devices, where the Specification provides a more fulsome meaning that the term includes, at least, “the connection structure, connection data and/or locations of connection.” See id. at 4:55–57. We invite the parties to provide additional briefing on the construction of this term during trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Lee discloses that the P2P overlay is generated with the overlay generation unit 220 that generates the P2P overlay by analyzing information regarding “the corresponding application service, the peer, and the network,” where the network information “may include a network topology, a maximum bandwidth, a current network usage, [and] a transmission delay time, and the like.” Ex. 1005 ¶ 54. We determine that this disclosure provides support for Mr. Lett’s testimony that “Lee describes techniques for changing an overlay in response to changing network characteristics,” which could be beneficial. Ex. 1003 ¶ 48. Accordingly, on this preliminary record, we find this evidence is sufficient to support a rationale to combine Schwan and Lee. See KSR, 550 U.S. at 401 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious.”).” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,727,655 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 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 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,706 - Innoscience (Zhuhai) Technology Company, Ltd / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 18, 2025 · IPR2023-01381 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1–3 and 7–9 are unpatentable as obvious over Uemoto and Smith; the motion to amend is granted, and proposed substitute claims 13 and 14 are not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In order to determine whether an invention would have been obvious at the time the application was filed, we consider the level of ordinary skill in the pertinent art. Graham, 383 U.S. at 17. In assessing 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) (quotation omitted). Petitioner contends a person of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering, chemical engineering, physics, or material science, or a closely related field, and at least two years of experience in semiconductor device design or fabrication, including the processing of semiconductor materials, analysis of device operation, or the development of new device topologies.” Pet. 5–6. Petitioner contends “[a]dditional education could substitute for professional experience and vice versa.” Id. at 6. Patent Owner contends that a person of ordinary skill in the art would have had “at least a four-year degree in electrical engineering, physics, material science, or a closely related field, and three years of professional work experience in the epitaxial growth, design, and fabrication of semiconductor electronic devices, including those of GaN.” PO Resp. 7 (citing Ex. 2009 ¶ 82). Upon review of the evidence of record and the parties’ arguments, we adopt Petitioner’s definition of the person of ordinary skill in the art as it is consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). We note, however, that the conclusions reached in this Decision would be the same under either proposed definition of the ordinarily skilled artisan. See Ex. 2009 ¶ 83 (Dr. Schubert testifying that his opinions would be the same under either proposed definition); Ex. 1033 ¶ 9 (Dr. Shealy testifying that the differences in proposed definitions of the ordinarily skilled artisan “would not change the outcome of the invalidity analysis in any material manner”); PO Resp. 7; Pet. Reply 1.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“compensated GaN layer above the barrier layer, and a gate contact above the compensated GaN layer.” Ex. 1001, 5:12–18. Petitioner contends the term “compensated” indicates that the step of compensating the GaN layer has already occurred, such that the term “compensated GaN layer” should be construed as a “‘[d]oped GaN layer formed with a step to passivate its impurities’ which is a ‘product-by-process’ limitation.”5 Pet. 12–14. And, because compensation with hydrogen was the “critical step” distinguishing the claims from the prior art, and because hydrogenation in as-grown III-nitride materials had been well known for over a decade by 2009, Petitioner contends “compensated” “cannot be interpreted as mere hydrogen presence in as-grown material, a well-known property of doped GaN.” Id. at 15. Patent Owner contends “compensated GaN material” should be construed as “a semiconductor GaN gate material in which one type of impurity (for example, donor) cancels the electrical effects of the other type of impurity (for example, acceptor).” PO Resp. 11 (citing Ex. 2009 ¶ 92) (emphasis added). Patent Owner contends this construction is consistent with the IEEE dictionary, which defines “compensated semiconductor” as 5 Given that product-by-process steps in a device claim are not entitled to patentable weight, Petitioner contends “the prior art only need show a material with passivated impurities to show unpatentability, not the step to achieve it.” Pet. 15–16. “[a] semiconductor in which one type of impurity or imperfection (for example, donor) partially cancels the electric effects of the other type of impurity or imperfection (for example, acceptor).” PO Resp. 14 (quoting Ex. 2004). Patent Owner contends its construction is also consistent with the written description of the ’294 patent, which explains that a compensated GaN material is part of the gate and includes a p-type impurity that imparts an electrical effect (i.e., conductivity), as well as a second impurity, e.g., hydrogen, that partially cancels the electrical effect of the p-type impurity, rendering the layer semi-insulating. Id. at 14–15 (citing Ex. 1001, 3:10–13, 3:43–45). On this record, we construe “compensated GaN layer” as “a GaN layer in which one type of impurity (for example, donor) partially cancels the electric effects of the other type of impurity (for example, acceptor).” This is consistent with the disclosures of the ’294 patent, the IEEE dictionary definition, and the construction ultimately adopted by the ITC. Ex. 2004, 3; Ex. 1049, 16–17 (ITC construing “compensated GaN layer” to mean “a GaN layer in which one type of impurity partially cancels the electrical effects of another type of impurity”); Ex. 1001, 3:43–45 (explaining that the compensated GaN layer of the ’294 patent is formed through the “passivation of a p-type impurity using hydrogen”). For the reasons set forth below, however, we decline to construe “compensated GaN layer” as a product-by-process claim term (as asserted by Petitioner), or to limit the compensated GaN layer to a gate material (as asserted by Patent Owner).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“There are two exceptions to the general rule that we apply the ordinary and customary meaning of a claim term: (1) when a patentee sets out a definition and acts as his own lexicographer, or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. See Thorner, 669 F.3d at 1365. The standards for lexicography and disclaimer, however, are “exacting.” Id. at 1366. There is no argument that the patentees acted as their own lexicographer to redefine the term “compensated GaN layer.” With respect to disavowal, a “patentee may demonstrate intent to deviate from the ordinary and accustomed meaning of a claim term by including in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Thorner, 669 F.3d at 1366 (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). As noted by Patent Owner, the title of the ’294 patent is, in part, “Compensated Gate MISFET” and much of the discussion of the ’294 patent is of a compensated GaN layer that is directly below the gate contact and above a barrier layer and operates in conjunction with the gate contact to control the on/off state of the transistor. PO Resp. 12–14. We are presented with insufficient argument or evidence to conclude, however, that these disclosures rise to the level of a disclaimer. For example, although the title of the ’294 patent is directed to a “Compensated Gate MISFET,” claim 1 is more broadly directed to “[a] column III Nitride transistor.” Ex. 1001, 5:12, code (54). Nor are we directed to an expression or statement of manifest exclusion in the ’294 patent that would serve to disclaim any “compensated GaN layer” that is not directly below the gate and/or that does not function in concert with the gate electrode to control the on/off state of the transistor. See Thorner, 669 F.3d at 1366. With respect to the stated goals of the invention, as noted by Patent Owner, one of the primary purposes of the compensated GaN layer of the ’294 patent is to reduce gate leakage and gate capacitance. Ex. 1001, 2:13– 19, 3:18–21 (“[U]sing a compensated semiconductor layer 38 leads to low gate leakage during device operation.”). We cannot use the goals of the invention, however, to rewrite the claims or insert terms that are not present. See Thorner, 669 F.3d at 1366. Moreover, the prior art of record indicates that a compensated GaN layer that is below the gate contact and above a barrier layer, but not part of the active gate structure, may also “decrease the leakage current between the gate and the drain.” Ex. 1006 ¶¶ 44 (“Even when a positive bias of 5 V or higher is applied to the gate electrode, no significant gate-leakage current is observed.”), 61. As such, evidence of record suggests that a person of ordinary skill in the art would have understood that one of the primary goals disclosed in the ’294 patent is achieved regardless of whether the compensated GaN layer is part of the gate, or simply in close vicinity to the gate. In view of the foregoing, we are not persuaded that the written description of the ’294 patent indicates that the “compensated GaN layer” must be part of the gate structure.” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To be probative, Patent Owner must prove there is a nexus between the presented evidence and the merits of the claimed invention. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). A rebuttable presumption of nexus applies when the “patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco, 851 F.2d at 1392). “That is, presuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.’” Id. (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). If the praise is not limited to the features of the claimed invention, the patent owner may still prove nexus “by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). Patent Owner contends that the compensated gate of the ’294 patent “was a breakthrough invention and resulted in the first commercially viable enhancement-mode GaN transistor.” PO Resp. 60 (citing Ex. 2009 ¶¶ 192– 193, 197; Ex. 2021). Patent Owner further contends that this achievement required the counter-intuitive use of a compensated gate material in the gate structure, and represented “a technological leap that laid the foundation for viable enhancement-mode GaN transistors.” Id. at 61–62. For this achievement, Patent Owner contends the inventor, Dr. Alex Lidow, received the 2015 SEMI Award. Id. at 60 (citing Ex. 2021). Upon review of Patent Owner’s evidence and the parties’ arguments, we find that Patent Owner’s objective indicia evidence is entitled to little, if any, weight. The evidence of praise relied upon by Patent Owner is not clearly linked to the claimed invention or any particular product having each of the claimed features of the ’294 patent. Ex. 2021. For example, the 2015 SEMI award was provided to Dr. Lidow “for commercialization of GaN power devices.” Id. An article explaining the award indicates that “high cost” previously “limited [the] commercial success” of GaN technologies, but Dr. Lidow was able to overcome these issues, “from resolving packaging limitations to establishing a low-cost supply chain,” “through persistence.” Id. This praise is not demonstrably linked to the claimed invention or any particular device, and does not mention the use of a compensated gate, or any other relevant feature recited in the claims. In view of the foregoing, we determine that Patent Owner’s objective evidence of non-obviousness is entitled to little, if any, weight.” slip op. at 20
Patent outcomesUS 8,350,294 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 8,350,294 - PTAB · Jan 28, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–3, 5, 7–13, 15–19, and 23–25 based on the asserted grounds; the Board found a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 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 explained below, we institute an inter partes review of the ’448 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’448 patent was filed after March 16, 2013, the effective date of the relevant amendment, the AIA versions of §§ 102 and 103 apply. communication technologies.” Pet. 5 (citing Ex. 1003 ¶ 13–15). For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe 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), including construing 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.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner contends that “no claim elements need a formal construction for purposes of resolving controversies in this proceeding.” Pet. 5. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting 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)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Zhang, in light of Zill’s suggestion, to generate wakeup packets at Zhang’s server 404 rather than at end user 406. Pet. 36 (citing Ex. 1004 ¶¶ 61, 62; Ex. 1003 ¶¶ 112–119). Petitioner contends that doing so would have allowed Zhang to accommodate more types of requesting computers, including legacy hosts that might not have the software or hardware to securely process Zhang’s query replies and generate wakeup messages. Id. at 36–37 (citing Ex. 1004 ¶¶ 61, 62, 64, 65, 77; Ex. 1005 ¶ 111; Ex. 1003 ¶ 113). Petitioner also argues that generating the wakeup messages at the server would improve security, as servers would have been able to operate better security features. Id. at 37 (citing Ex. 1004 ¶ 36; Ex. 1005 ¶¶ 40, 111; Ex. 1003 ¶¶ 114–115). Petitioner further argues that generating wakeup messages at the server would have reduced the quantity of messages exchanged containing sensitive information, reducing the risk of interception by a malicious actor. Id. at 37–38 (citing Ex. 1003 ¶ 116). Petitioner further argues that it would have been more efficient to generate the wakeup message at the server, as Zill suggests, as the server can include optimized hardware. Id. at 38 (citing Ex. 1003 ¶ 117). According to Petitioner, the combination would only require combining familiar elements according to known methods, to yield predictable results, and that a skilled artisan would have a reasonable expectation of success doing so. Id. at 38–39 (citing Ex. 1003 ¶¶ 118–119). Patent Owner does not yet contest these allegations. Upon consideration of Petitioner’s evidence, including Mr. Kardashov’s testimony, we are persuaded that Petitioner shows sufficiently that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Zhang and Zill.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Jan 28, 2025 · IPR2024-01192 · APJ Michael J Strauss · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 16 on all asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’916 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–10 and 16 of the ’916 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the ’916 patent “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 12–14). Patent Owner has not provided any proposed qualifications for a person of ordinary skill in the art. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’916 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 9 (citing Ex. 1003, ¶¶ 43–44; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. § 42.100). Patent Owner presents no proposed claim constructions at this time. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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 successMotivation foundReasonable expectation foundInstituted
“First, Petitioner contends, with the Kardashov Declaration providing supporting testimony, that a [person of ordinary skill in the art] would have understood that implementing [the] Lorex Manual’s system to include a conventional “network server” that facilitates hole-punching (as suggested by Kim941) would provide an improved and advantageous approach for establishing a P2P connection between the DVR and remote client device when the DVR is located behind a firewall and/or network address translator (NAT) that would otherwise prevent the remote client device from initiating a P2P connection with the DVR (e.g., due to common security policies of firewalls/NATs that block unsolicited inbound communications from devices outside of the DVR’s local network). Id. at 15 (citing Ex. 1003 ¶ 74; Ex. 1008 ¶ 18–19, 121).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,916 - PTAB · Dec 16, 2024 · IPR2024-01012 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood of unpatentability and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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). Upon consideration of the Petition in view of the record at this stage, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we grant institution of an inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“parties on the present record, we are persuaded Petitioner sufficiently shows the combination of Bosnyak-392 and Son teaches or suggests all of the limitations of claim 1, and sufficiently explains how a person of ordinary skill in the art would have used Bosnyak-392’s teaching of using exfoliated, open-ended carbon nanotube fibers having two different aspect ratios in a composition with improved electrical and mechanical properties, with Son’s implementation of a specific bimodal distribution of aspect ratios, to arrive at the composition of claim 1 with a reasonable expectation of success. We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not find persuasive Patent Owner’s arguments that Bosnyak- 392 teaches away from using nanotubes with a lower aspect ratio, or that Bosnyak-392 has an objective of maintaining longer nanotubes. See Prelim. Resp. 5–9. Patent Owner’s arguments appear to be based on a mischaracterization of Bosnyak-392, which read as a whole, discusses methods for exfoliating carbon nanotubes and physical properties of exfoliated nanotubes, such as length and diameter, that are not apparent when the nanotubes are aggregated. E.g., Ex. 1005 ¶ 37. Although Bosnyak-392 recognizes that nanotube exfoliating techniques tend to reduce nanotube length (see Ex. 1003 ¶ 28), it does not discourage the use of shorter nanotubes. Rather, it recognizes that using short and long nanotubes together can produce a composite with improved electrical and mechanical properties. See id. (citing Ex. 1005 ¶ 73). See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference does not teach away from a claimed invention unless it “criticizes, discredits, or otherwise discourages” the claimed solution).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Having considered both sides’ arguments as to Fintiv factors 2 and 3, we determine that the considerations of these factors weigh against exercising discretionary denial. Neither party directs us to any substantive order issued by the district court in the parallel litigation, which indicates the court has not yet considered claim construction or potential invalidity of the ’282 patent. The Markman hearing will not occur until June 2025, and the expert discovery cutoff is not until August 2025. Ex. 2002. Thus, although the parties have begun discovery as to invalidity issues, much further work remains in the parallel district court litigation. We also take into account Petitioner’s prompt filing of the Petition, as weighing against exercising discretionary denial. See Fintiv 11 (“If the evidence shows that the petitioner filed the petition expeditiously, such as promptly after becoming aware of the claims being asserted, this fact has weighed against exercising the authority to deny institution . . . .”).” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,608,282
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.