• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00901 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–20 and all petition grounds, finding a reasonable likelihood that Lee, Freda, and Ly render claim 1 obvious.

  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 under 35 U.S.C. § 314 (2023) 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 ’721 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the effective filing date of the claimed invention, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). 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) (citing Custom Accessories, Inc. v. Jeffrey- Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Petitioner argues that one of ordinary skill in the art at the time of the ’721 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 and 5G new radio (NR) cellular technology.” Pet. 4 (citing Ex. 1003 ¶ 32). Petitioner adds that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Id. at 4–5. 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 ’721 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 2. 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. 4–5. We view the definition for the level of ordinary skill as consistent with the ’721 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. 4. Patent Owner argues that at this stage, “claim construction is not required to resolve any issues.” Prelim. Resp. 2. 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 successOther

    “IV. PRINCIPLES OF LAW A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness, if present.5 See Graham, 383 U.S. at 17–18. When evaluating a claim for obviousness, we also must “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,374,721
• Apple, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00911 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–16 on all asserted 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

    “We have authority under 35 U.S.C. § 314 to determine whether to 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, 584 U.S. 357, 363–66 (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) (2024); 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 ’615 patent. Accordingly, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’615 patent “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.” Pet. 3. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states 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. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’615 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).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. 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))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “configuration parameters comprising first random access parameters, for beam failure recovery.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “configuration parameters comprising first random access parameters, for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “configuration parameters comprising first random access parameters, for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “configuration parameters comprising first random access parameters, for beam failure recovery.” Thus, we agree with Petitioner that the “configuration parameters comprising first random access parameters, for beam failure recovery,” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “configuration parameters [that] may indicate the maximum number of beam of beam failure counter” are such parameters for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As the Petition’s citations suggest, these are substantially the same as examples identified in the ’615 patent. See Pet. 15–16 (citing Ex. 1001, 63:18–23, 41:65–67; Ex. 1003 ¶ 56). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. at 16 (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A–C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶ 57). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the configuration parameters must be received in a single message. Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “configuration parameters, comprising first random access parameters, for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,637,615
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00896 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–12 and all asserted grounds, finding a reasonable likelihood that Chen and 3GPP render at least one challenged claim obvious.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review under 35 U.S.C. § 314 (2023) 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 ’081 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 ’081 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 8–9. 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. 32. We view the definition for the level of ordinary skill as consistent with the ’081 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Petitioner argues “that no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 5. Patent Owner argues that at this stage of the proceeding, “claim construction is not required to resolve any issues.” Prelim. Resp. 8. 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted

    “See Graham, 383 U.S. at 17–18. When evaluating a claim for obviousness, we also must “determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). V. ALLEGED OBVIOUSNESS OVER CHEN AND 3GPP Petitioner argues that the combination of Chen and 3GPP renders claims 1–12 obvious. Pet. 32–77. For the reasons that follow, we determine that Petitioner demonstrates a reasonable likelihood that it would prevail in showing that the combination of Chen and 3GPP renders obvious at least one of these claims.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,912,081
• Apple, Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00910 · APJ Kevin W Cherry · IPR · Institution

  Instituted IPR of claims 1–19 on all asserted grounds after finding a reasonable likelihood that Apple would prevail on at least one claim, including over Cirik alone.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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 ’128 patent. Accordingly, we institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the declaration testimony of Dr. Akl, Petitioner contends that an ordinarily skilled artisan for the ’128 patent “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.” Pet. 4. Petitioner additionally contends that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner states 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. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’128 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).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that “no formal construction are presently necessary for purposes of demonstrating obviousness of the Challenged Claims based on [the asserted grounds].” Pet. 9. Patent Owner does not at this time address claim construction. See generally Prelim. Resp. 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))). We note, however, there may be some claim terms below whose constructions the parties may wish to address during trial.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted

    “On the current record, we find that Petitioner has shown sufficiently that Cirik teaches the claimed “first configuration parameters for beam failure recovery, comprising first random access parameters.” See Pet. 13– 17. Patent Owner argues that Petitioner fails to address this limitation, but we disagree. Prelim. Resp. 3. As we have set out above, Petitioner has provided a detailed mapping of what disclosures of Cirik (and Cirik’s provisional) on which it relies. Based on the current record, we see nothing incorrect in Petitioner identifying multiple parameters as making up the “first configuration parameters for beam failure recovery.” As the plain language of claim 1 makes clear, there are “parameters”—plural—not just one. We also find, on the current record, that those “parameters” are not limited by the claim to only “random access parameters.” The disputed claim limitation uses the transitional phrase “comprising” in reciting the “first configuration parameters for beam failure recovery.” As courts have explained, “[i]n the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements.” Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001). Claim 1 recites “first configuration parameters for beam failure recovery, comprising first random access parameters.” Thus, we agree with Petitioner that the “first configuration parameters for beam failure recovery” can—but are not required to—include additional parameters (i.e., in addition to the recited “first random access parameters”). Here, we find that, on the current record, Petitioner has shown sufficiently Cirik’s “one or more configuration parameters [that] may indicate the maximum number of beam of beam failure counter” is such a parameter for beam failure recovery. Ex. 1005 ¶ 307; Ex. 1003 ¶ 52. As Petitioner correctly notes, these are substantially the same as examples of “first configuration parameters for beam failure recovery” identified in the ’128 patent. See Pet. 15 (citing Ex. 1001, 63:9–12, 41:65–67; Ex. 1003 ¶ 53). Petitioner has further sufficiently shown that Cirik also discloses that as part of its beam failure recovery process, Cirik initiates certain “random access (RA) procedures.” Id. (citing Ex. 1005 ¶ 152, 161–164, Figs. 13A– C). As part of these RA procedures, we agree that Cirik discloses sending a configuration message including “one or more random access channel (RACH) parameters.” Id. (citing Ex. 1005 ¶¶ 151–154, 156, 161; Ex. 1003 ¶¶ 54–55). As Petitioner explains, “[t]he RACH parameters included in a configuration message can include indications of ‘one or more Physical RACH (PRACH) occasions available for transmission’ of a random-access preamble message and information for determining the power level of the transmission.” Id. (citing Ex. 1005 ¶¶ 153, 154). Cirik explains this “contention-free random access procedure . . . may be initiated for beam failure recovery.” Ex. 1005 ¶ 162; see also Pet. 20–23 (discussing in detail in the context of limitation [1b] the RA procedures for beam failure recovery in Cirik). We note that nothing in the claim language requires that the first configuration parameters must be received in a single message. Indeed, the claim language explicitly permits “one or more messages.” Thus, there is nothing improper about the Petitioner identifying multiple messages as including the “first configuration parameters for beam failure recovery” (i.e., Cirik’s configuration parameters that indicate the maximum number of beam failures and Cirik’s configuration parameters for random access processes used in connection with beam failure recovery), as Patent Owner suggests. Prelim. Resp. 4 (“But at no point does Petitioner assert that the configuration message for first random access parameters is included within the ‘one or more configuration parameters [that] indicate the maximum number of beam failures’ that it identifies for the ‘first configuration parameters’ limitation.”). Accordingly, for purposes of institution, we find that Petitioner has shown sufficiently that Cirik discloses this limitation.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,979,128
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00909 · APJ Justin T Arbes · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Ying and Yang.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “c) Conclusion Petitioner’s contentions are supported by the testimony of Dr. Akl and are persuasive based on the current record. See Pet. 7–28; Ex. 1003 ¶¶ 58–83. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). 4. Claims 2–20 Patent Owner does not argue dependent claims 2–20 separately. Prelim. Resp. 3–5. On this record, we disagree with Patent Owner’s arguments regarding parent claim 1 and are persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. See supra Section II.D.3. Accordingly, we need not determine at this time whether Petitioner also has shown a reasonable likelihood of prevailing as to any of the other challenged claims. See 37 C.F.R. § 42.108(a).” slip op. at 21

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Interpretation We interpret each challenged 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). Petitioner argues that “no claim terms need be construed.” Pet. 6–7. Patent Owner states that “claim construction is not required to resolve any issues.” Prelim. Resp. 2. 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) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’695 patent (November 2019),4 a person of ordinary skill in the art 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,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–32). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 2. Based on the record presented, including our review of the ’695 patent and the types of problems and solutions described in the ’695 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “3. Claim 1 a) Petitioner’s Contentions Petitioner argues that Ying and Yang collectively teach all of the limitations of claim 1 and a person of ordinary skill in the art would have been motivated to combine their teachings, with a reasonable expectation of success. Pet. 11–28. As to the combination of references, Petitioner asserts that a person of ordinary skill in the art “would have been motivated to include configuration parameters for both the NUL and SUL carriers, as taught in Ying, in a single DCI, as expressly depicted in Yang, to coordinate both normal uplink (NUL) and supplemental uplink (SUL) transmissions in a mobile communication environment.” Id. at 12 (citing Ex. 1003 ¶¶ 58–59). According to Petitioner, “[t]he combination involves coordinating both carriers already operating in the mobile communication environment by implementing Ying’s DCI example (e.g., in Listing 6) to provide cancellation indications for both the normal uplink (NUL) and the SUL in one DCI,” achieving the “predictable result” of “improv[ed] communication capacity, speed, flexibility, and/or efficiency.” Id. at 12–13 (quoting Ex. 1004, col. 1, ll. 31–41). Petitioner also alleges various other reasons for why a person of ordinary skill in the art would have been motivated to combine the references’ teachings in that manner, including “reduced communication overhead,” simplification of the UE’s decoder operation, and the need to choose from only two options (i.e., “using one DCI to encode both NUL and SUL carriers . . . or using two DCIs”). Id. at 13–17 (citing Ex. 1003 ¶¶ 60–64).” slip op. at 15

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,986,695
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art 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,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Interpretation We interpret each challenged 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). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,139,944
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · 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 obviousness
  Patents in suitUS 10,568,113
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · 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 Graham
  Patents in suitUS 10,951,271
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.All claims unpatentable
  PTAB · Oct 27, 2025 · IPR2021-01257 · APJ Sheila F Mcshane · IPR · Remand

  On remand, the Board held claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 unpatentable as obvious over the stated Newton and Reime grounds.

  RulingsRemand decision

  • RemandOther

    “On February 12, 2025, the Federal Circuit issued an opinion vacating and remanding our Final Written Decision based on the determination of the construction of the impingement term recited in the ’170 patent. Appeal Dec. 9. More specifically, the Federal Circuit found that the Board’s construction was too limited. Id. at 8–9. The Federal Circuit found that As properly construed, in the context of the challenged claims, ‘impingement of an electromagnetic radiation spot’ must include ‘reflected, projected, and interrupted or blocked radiation.’ In other words, when a finger or non-light-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied. Contrary to the Board’s construction, as articulated by Power2B on appeal, the ‘electromagnetic radiation spot on . . . [the] interactive surface element’ does not ‘require[that] radiation imping[e] on the surface element’ and, hence, does not exclude interrupting or blocking radiation. Appeal Dec. 9 (citations omitted).” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “impingement of an electromagnetic radiation spot” includes “reflected, projected, and interrupted or blocked radiation” and “when a finger or nonlight-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied.” Appeal Dec. 9. Under this construction, we determine that Petitioner has demonstrated that Newton teaches this claim limitation. More specifically, Newton discloses that a user touch interrupts beams of electromagnetic radiation over certain spots over a surface, which provides an output. See Ex. 1012 ¶¶ 13, 25; see also Ex. 1002 ¶ 72. slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We agree with Petitioner that the claims do not require a detector assembly to be physically separate from the interactive surface element. The language of the claims does not require this, nor is there any disclosure in the ’170 patent specification that indicates that separation of these elements is required. Patent Owner refers to certain embodiments that have separate structures, but we decline to import this as a requirement to the claim term. We also agree with Petitioner that the ’170 patent broadly views what it means to be “at an edge,” and that can include being behind, about, or along an edge within its scope. See Ex. 1001, 55:63–56:2.” slip op. at 24

  Patent outcomesUS 9,317,170 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,317,170
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution denied
  PTAB · Oct 8, 2025 · IPR2025-00701 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “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, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’138 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–14 of the ’138 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 6. Patent Owner does not address claim construction. See generally Prelim. Resp. 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 8

  • Skill levelSkill level petitioner adoptedOther

    “a Ph.D. or master’s degree in electrical engineering, physics, materials science, or a related field, and at least one year or four years, respectively, of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent. Pet. 8 (citing Ex. 1024 ¶¶ 25–29). Petitioner contends that less work experience can be compensated for by a higher level of experience and vice versa. Id. (citing Ex. 1024 ¶ 25). Petitioner also asserts that the proposed level of skill would be the same under any of the United States, Japanese, or PCT application dates. Id. at 8–9 (citing Ex. 1024 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s proposed level of qualifications for one of ordinary skill in the art. Prelim. Resp. 20. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’138 patent and the asserted prior art of record.” slip op. at 7

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “As discussed above, Petitioner relies upon Parkin, and its layers 115 and 175, as the claimed first and second ferromagnetic material layers, respectively. See Pet. 10, 16. Petitioner admits that these layers are 8 In the Petition, Petitioner refers to the lower electrode “ferromagnetic layer 110’ as discussed in Claim 1[a]” in the discussion of limitation 1[d]. Pet. 18. Petitioner’s reference to “layer 110’” appears to be in error because the Petition’s discussion for limitation 1[a] refers to layer 115 of Parkin, as does Dr. Bokor’s testimony related to limitations 1[a] and 1[d]. Pet. 10; Ex. 1024 ¶¶ 109, 136. amorphous, but contends that, as Parkin discloses, these layers may be annealed. Id. at 17. Petitioner, however, refers to Parkin’s disclosure that only “a portion of the storage layer 175” is crystallized after annealing. Id. at 17–18 (citing Ex. 1062, 18:51–55) (emphasis added). Petitioner also relies upon Parkin’s “thin crystalline ferromagnetic layer” that is crystallized to teach limitation 1[d]. Id. at 18 (citing Ex. 1062, 18:55–59; Ex. 1024 ¶¶ 131–132) (emphasis added). Dr. Bokor additionally testifies that it is “Parkin’s ‘thin crystalline ferromagnetic layer’ of CoFeB” that meets the “entirely crystallized” requirement of limitation 1[d]. Ex. 1024 ¶ 132. Parkin, however, states that a thin crystalline ferromagnetic layer is formed, but “the bulk of storage layer 175 remains amorphous.” Ex. 1062, 18:55–60 (emphasis added). Petitioner fails to reconcile how its assertions that the first and second ferromagnetic layers, which are mapped to the totality of layers of 115 and 175, meet the limitation that the first and second ferromagnetic layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full depth of certain “layers” of Parkin for the teaching of the ferromagnetic layers, but then only relies upon thin portion of that depth for the assertion that the “layers” are entirely crystallized.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,367,138

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.