• Google LLC v. Sandpiper CDN, LLCAll claims unpatentable
  PTAB · Oct 9, 2026 · IPR2025-00826 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–23 are unpatentable under § 103, including over Glines alone and the additional asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner provides substantially the same assessment. PO Resp. 16. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction. Pet. 3; PO Resp. 16. We address the parties’ interpretation of the scope of “causing said hostname to be resolved” in our discussion of Petitioner’s assertions for limitation [1.d]. Based on the record before us, we determine that no claim term requires express construction.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Strike new argumentNew argument consideredDecided for petitioner

    “We do not agree. The Petition states that Glines discloses that the anycast is resolved by an ISP DNS server. Pet. 20. The Petition identifies Glines’s local ISP DNS resolver 18 as the claimed ISP DNS server. Id. The Petitioner further asserts that Glines’s ISP DNS resolver 18 sends the request to the DNS server 38, but states that “Glines’s local DNS resolver, an ISP DNS server, thus causes the hostname . . . to be resolved.” Id. at 21–22. The Petition also drew an analogy with the ’112 patent and the role of local DNS server 70a in the Petition. See Pet. 20–21. Because the Petition and the Reply both identify Glines’s local ISP DNS resolver 18 as causing the hostname to be resolved, Petitioner has not advanced a new theory of unpatentability in its Reply. 6 At oral argument, Patent Owner suggested a narrower claim reading, but admitted that this had not been briefed. Tr. 36:15–38:9, 44:9–16. We do not address this reading because it was not set forth in the briefing. In the briefing, Patent Owner took the broader reading discussed here. See Tr. 41:12–23; PO Sur-reply 7.” slip op. at 13

  Patent outcomesUS 9,021,112 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,021,112
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · Jun 10, 2026 · IPR2025-00350 · APJ Jason M Repko · IPR · Final written decision

  Claims 7–12 were held unpatentable over Wannamaker alone or with Avellan; claims 1–6 and 13 were not shown unpatentable because Avellan did not teach the claimed screen-capture sequence and assembly.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 17. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions.” slip op. at 5

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

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 19–20; PO Resp. 18. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 5

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Yet paragraph 122 of Mr. Lipoff’s declaration merely repeats the Petition’s argument almost verbatim. Compare Ex. 1007 ¶ 122, with Pet. 28. Mr. Lipoff does not add any citation to Avellan or any other source that supports his testimony. See Ex. 1007 ¶ 122. Nor does Mr. Lipoff offer any additional technical reasoning than what is stated in the Petition. Testimony may be entitled to little weight if it merely restates the petition’s unsupported, conclusory assertions without adding supporting evidence or technical reasoning. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). That is the case here.” slip op. at 8

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

    “We are persuaded by Patent Owner’s argument that claim 1 is not obvious over Avellan because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 21–23. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. PO Sur-reply 20. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 21–23; PO Sur-reply 20.” slip op. at 7

  Patent outcomesUS 10,524,002 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 10,524,002
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonNo claims unpatentable
  PTAB · May 29, 2026 · IPR2025-00349 · APJ Jason M Repko · IPR · Final written decision

  Claims 1–21 were not shown unpatentable because Avellan did not disclose the claimed sequence of screen captures used to assemble a media stream.

  RulingsFinal written decision

  • Skill levelOther

    “Patent Owner submits a similar definition and does not dispute the Petition’s characterization of the level of ordinary skill in the art. PO Resp. 22. No express finding is necessary. The level of ordinary skill in the art is reflected by the prior art of record. Any perceived difference in how each party characterizes a POSITA does not change our analysis or conclusions.” slip op. at 5

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

    “on ordinary and customary meaning. Pet. 14–15; PO Resp. 22. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding.” slip op. at 6

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “c. Analysis “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We are persuaded by Patent Owner’s argument that Avellan does not anticipate claim 1 because it does not assemble a media stream of multimedia items using the recited screen captures. See PO Resp. 26–29. We agree with Patent Owner that the plain language of the claim requires more than transmitting individual media items. Sur-reply 21. To the extent that Avellan captures images, those images do not meet the claimed requirements for a “temporal sequence of screen captures” in the independent claims, which must (1) be of the web page rendered by a browser, (2) “define all the content of the web page at a given time,” (3) “illustrate a dynamic change of at least a portion of the content over time” when two of them are compared, and (4) used to assemble “the at least one media stream.” Rather, the record better supports Patent Owner’s argument that Avellan transmits the multimedia items separate from any media stream assembled from screen captures. PO Resp. 26–29; Sur-reply 21.” slip op. at 8

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

    “All other challenged claims require the “generating” and “assembling” operations because they depend from claims 1, 12, or 17. Petitioner does not allege that the additional references—Durante, Ma, Suzuki, Wanamaker, Heikens, Matthews, or Wilsher—teach or suggest the “temporal sequence of screen captures” recited in claim 1. Rather, Petitioner’s reasoning in the challenges to the dependent claims pertaining to the screen captures mirror the rationale presented in the independent claim. See, e.g., Pet. 25 (arguing that Avellan’s screen captures correspond to the video content in the challenge to claim 2), 26–27 (arguing that Avellan obtains screen captures from a playback of a video on the webpage in the challenge to claim 4). Petitioner’s argument that Avellan teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103 depend on the reasoning and insufficiently supported characterizations of Avellan in the challenges based on 35 U.S.C. § 102, as discussed above. See Pet. 40–60. grounds based on anticipation under 35 U.S.C. § 102 or teaches or suggests these operations in the grounds based on obviousness under 35 U.S.C. § 103, Petitioner has not met its burden to show that any challenged claim is unpatentable as anticipated by Avellan or obvious over any of the combinations of Avellan and the other cited references.” slip op. at 15

  Patent outcomesUS 10,123,074 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,123,074
• Stingray Group Inc. / Stingray Music USA, Inc. v. Edwin A. Hernandez-MondragonSome claims unpatentable
  PTAB · May 28, 2026 · IPR2025-00351 · APJ Brian P Murphy · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over the stated combinations; claims 10–26 were not shown unpatentable because Avellan does not teach limitations [10d]–[10f].

  RulingsFinal written decision

  • Skill levelOther

    “would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). The Petition further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition and does not take issue with the Petition’s characterization of the level of ordinary skill in the art of delivering multimedia content. Resp. 18. We determine that no express finding is necessary and that the level of ordinary skill in the art is reflected by the 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). Any perceived difference in how each party characterizes a POSITA’s education, knowledge, and work experience does not change our analysis or conclusions. slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Neither party has offered any claim construction arguments, relying on ordinary and customary meaning. Pet. 11; Resp. 18–19; Reply 5. We determine that construction of claim terms is not necessary to resolve the disputes raised by the parties in this proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable

    “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “‘Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’” Id. at 1269 (quoting In re Oelrich, 666 F.2d 578, 581 (C.C.P.A. 1981)). Reasonable inferences of a POSITA may suffice to establish inherent disclosure in a prior art reference such as Farber. See Eli Lilly v. Los Angeles Biomedical Research Institute, 849 F.3d 1073, 1074–1075 (Fed. Cir. 2017) (“[T]he dispositive question regarding anticipation is whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.”). Here, however, we find the Petition’s argument and evidence insufficient to establish by a preponderance of the evidence that Farber inherently discloses limitation [1b].” slip op. at 16

  Patent outcomesUS 11,140,441 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 11,140,441
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. 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.’”)).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23

  Patent outcomesUS 10,680,167 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,680,167
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] 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 “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. 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 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Mar 27, 2026 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–2 are unpatentable as obvious over each Bowen-based combination; claims 3–4 were not shown unpatentable, and the Nagahama-based grounds failed for all claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). 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). Consistent with the Institution Decision (Dec. 7), we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art. Patent Owner does not dispute that Dr. Bokor is qualified as a person of ordinary skill in the art in accordance with the assessment adopted. See Tr. 90:9–15. Patent Owner, however, questions Dr. Bokor’s knowledge on the formation of crystalline materials and seeks to exclude his related testimony. See PO Resp. 1–2, 27; PO Mot. Excl. 12–15. We address this issue infra Section V.” slip op. at 7

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

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 24. Patent Owner does not raise any claim construction issues in its Response. See generally PO Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes. 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

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised” in the patent owner response. 37 C.F.R § 42.23(b). The Consolidated Trial Practice Guide states that responding “does not mean proceed[ing] in a new direction with a new approach,” and “[w]hile replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered,” that is, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide § II.I (last updated Dec. 12, 2025) (“CTPG”), available at https://www.uspto.gov/patents/ptab/trial-practice-guide. We are not persuaded by Patent Owner’s assertions that Petitioner’s reply arguments on Parkin should not be considered. As discussed supra Section II.D.3.i above, the Petition includes the assertion that if Parkin’s CoFeB electrodes were used to modify Bowen, the MgO polycrystalline or single-crystal layer would still have the same 001 orientation. Pet. 33–34 (citing Ex. 1024 ¶ 129; Ex. 1062, 9:58–10:2, 18:49–51; Ex. 1005, 4:30–32). Petitioner’s support in the Petition references disclosures relating to Parkin’s Figure 3A (Ex. 1062, 18:49–51), which discloses a MgO(100) tunnel barrier, and the Petition also notes that the structure of Figure 3A may be inverted. Pet. 40 (citing Ex. 1062, 17:7–10). Patent Owner’s arguments, in large part, are related to Petitioner’s arguments in the Reply relating to Parkin’s Figure 11. Parkin’s Figure 11 is an embodiment where the structure of the devices of Figure 3A is inverted. See Ex. 1062, 22:29–33. We do not find that Petitioner’s arguments that are at issue in the Reply represent a new direction in its approach—the Petition is clearly based on the assertion that if Parkin’s CoFeB electrodes are used in Bowen, the device would have a MgO(001) tunnel barrier layer. Further, the Petition refers to Parkin’s disclosure that the device in Figure 3A may be inverted, which would be encompassed by the Figure 11 embodiment. Moreover, in the Institution Decision, we invited additional briefing on whether Parkin’s storage magnetic electrode was an amorphous ferromagnetic electrode, which relates to Parkin’s Figure 11 (Dec. 28–29). We are also not persuaded by Patent Owner’s argument that the Petition’s assertions do not correspond to what Petitioner argues in the Reply because they were referred to in the section pertaining to limitation 1[e]. The Petition includes a cross-reference in the limitation 1[d] discussion on the tunnel barrier layer limitation: “if Sunai’s or Parkin’s CoFeB electrodes are used as described in Claims 1[e] and 2 in this Ground, one of skill would understand that the MgO . . . would still have the same (001) orientation.” Pet. 33. Further, Petitioner’s arguments in its Reply properly respond to arguments made on contested issues. Patent Owner’s contentions on the merits in its Response are largely based upon the assertion that the modified MTJ of Bowen would not have a MgO(001) layer as claimed. See PO Resp. 4–10, 18–48. Petitioner’s reply arguments on Parkin relate to whether there would be a MgO(001) layer in its structure, so we find that Petitioner’s arguments on Parkin in its Reply (Pet. Reply 2–5) and the related evidence are appropriately responsive. slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that there is sufficient evidence in support of Petitioner’s assertion of the rationale to replace Bowen’s electrodes with CoFeB and anneal them. As discussed supra Section II.D.ii.2, Parkin’s Figure 11 depicts and describes a storage electrode that may be composed of amorphous CoFeB, with the formation of a MgO(001) barrier layer atop it. See Ex. 1062, 22:29–66. Patent Owner argues that Parkin’s benefits are because its CoFeB electrode is amorphous (PO Resp. 51–52), but this is not accurate. In Parkin, the CoFeB amorphous electrode crystallized at the interface layer between the barrier and the electrode. Id. at 19:6–19. Parkin discloses that higher TMRs were attributable to the crystallization of CoFeB. Id. at 18:63–19:22. Parkin also discloses that its completed CoFeB- MgOH(001)-CoFeB device was annealed with resulting high TMRs. Id. at 17:60–18:16. These disclosures provide support that one of skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB and anneal to crystallize them because of the known improvements of TMR. Additionally, Parkin’s disclosures support that the results of the combination would have been predictable. That is, Parkin actually discloses an amorphous CoFeB electrode, formation of a MgO(001) tunnel barrier on the amorphous electrode, and annealing the assembly, with a resulting high TMR. Accordingly, Petitioner has provided reasoning with rationale underpinning for the motivation to combine. See KSR, 550 U.S. at 415 (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).” slip op. at 31

  Patent outcomesUS 8,405,134 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,405,134
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01266 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 29, 36–38, 44–46, 48, 49, and 56–58 unpatentable as obvious over Reime, with additional grounds also supporting the challenged claims.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 32) and Petitioner filed an Opposition (Paper 33). We denied this motion. See Final Dec. 58–61.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “transmission paths. See Pet. Reply 14–15; PO Sur-reply 15. And we agree with both parties that the light that is transmitted directly through the plate to the sensor element does not have intervening reflections—such is consistent with the plain and ordinary meaning of “directly to.” See PO Resp. 31–32; Pet. Reply 14–15; PO Sur-reply 15. Nothing in claim 48’s language, however, requires that all of the reflected light be transmitted directly to the sensor element, which Patent Owner argues. Ex. 1001, 70:32–35; PO Resp. 31–32; PO Sur-reply 14–16. Rather, we agree with Petitioner that the claim language “merely requires that some light reflected by the object goes ‘directly to’ at least one sensor element once it is transmitted through the viewing plane defining plate.” Pet. Reply 14. We also agree that “none of these dependent claims purport to be exclusive of one another.” Id. at 15. Rather, claims 46–48 simply require some light be transmitted (or propagated) for their particular transmission path, without reciting all light. See Ex. 1001, 70:24–35.” slip op. at 13

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

    “We find Petitioner’s arguments based on Reime alone insufficient. Thus, we find that Petitioner does not show by a preponderance of the evidence that claim 49 is rendered obvious by Reime alone.” slip op. at 52

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “And in view of the above, we find persuasive Dr. Bederson’s testimony that “[c]hoosing a multi-element detector or a single-element detector would have been a simple design choice using commercially available detectors.” Ex. 1002 ¶ 117. Accordingly, we find that one of ordinary skill in the art would have found it obvious for Reime’s receivers to be implemented using discrete single-element detectors. See KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We find unavailing Patent Owner’s argument that “Petitioner relies on expert testimony to gap-fill missing elements regarding Reime’s failure to disclose or suggest the different claim arrangements of detector elements in a ‘detector assembly.’” PO Resp. 78 (citing Ex. 1002 ¶¶ 111–119; Ex. 2056 ¶ 171). Rather, in light of Reime’s teachings, coupled with the general knowledge of one of ordinary skill in the art, it would have been obvious to employ discrete single-element detectors for Reime’s receivers. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony to supply an element of a claim). We appropriately consider such evidence of the knowledge that one of ordinary skill in the art would have had as part of our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). Moreover, “AAPA can be important evidence of general background knowledge, and general knowledge can be used to supply a missing claim 1371, 1378–79 (Fed. Cir. 2025). Here, Petitioner relies on the cited AAPA as evidence of one of ordinary skill in the art’s general knowledge at the time of the ’093 patent, and the AAPA is not the basis for this ground. See Pet. 4, 42–43; Pet. Remand 4–5. As Shockwave Med. explains, Federal Circuit “case law has long recognized numerous permissible uses for general background knowledge in an IPR such as, ‘for example, furnishing a motivation to combine, or supplying a missing claim limitation.” 142 F.4th at 1378–79 (quoting Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; Koninklijke, 948 F.3d at 1337–38)).” slip op. at 31

  Patent outcomesUS 9,569,093 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

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

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

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

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Samsung Electronics Co., Ltd. v. Wilus Institute Of Standards And Technology Inc.Instituted
  PTAB · Feb 9, 2026 · IPR2025-00933 · APJ Terrence W Mcmillin · IPR · Institution

  The Board instituted inter partes review of claims 1–12 on all three §103 grounds, finding a reasonable likelihood that Samsung would prevail.

  RulingsInstitution decision

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

    “The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–12 of the ’595 patent.3” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “B. Level of Ordinary Skill in the Art Petitioner contends that [A] person of ordinary skill in the art (“POSITA”) would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent. Pet. 3 (citing Ex. 1003 ¶ 26). Petitioner further contends that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Id. Patent Owner objects to Petitioner’s proposed level of ordinary skill in the art only “[t]o the extent that Petitioner requires [] the required experience and/or education level to be acquired by December 24, 2015.” Prelim. Resp. 8. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, with the exception of the openended language “at least,” we adopt the assessment offered by Petitioner.11 11 No matter how designated in this decision, any determination (except our determination to institute trial) is preliminary and non-binding. We wish to have the full record as developed during trial before rendering any binding determination, finding, or conclusion. It is not materially disputed by the Patent Owner and is consistent with the ’595 patent and the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther

    “[7.pre] A wireless communication method of a wireless communication terminal, the method comprising:13 Petitioner relies on Josiam “disclos[ing] ‘methods for efficient signaling and addressing in WLAN [wireless local area network] systems.’” Pet. 11 (citing Ex. 1003 ¶ 112; Ex. 1005 ¶ 4).14 The Petition states that “Josiam’s methods describe at least one station (i.e., a wireless communication terminal).” Id. 13 Petitioner does not address whether the preamble of claim 7 is limiting. See Pet. 1. We determine that the preamble of claim 7 is not limiting because it does not recite essential steps or structure and is not necessary to give life, meaning, and vitality to the claim. See Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, 962 F.3d 1362, 1367 (Fed. Cir. 2020). 14 Petitioner provides parallel citations to Exhibit 1006, the earliest provisional application to which Josiam claims priority (see Ex. 1005, code (60), in order to show that “the relevant subject matter relied upon herein is fully supported by respective provisional applications filed before the [filing date (December 24, 2015) of the earliest foreign application to which the ’595 patent claims priority (see Ex. 1001, code (30)].” Pet. 2. At least at this stage, there is no dispute between the parties as to whether Josiam or the ’595 patent are entitled to the claimed priority. See Prelim. Resp. 1 fn.1, 12 fn. 2. Therefore, unless deemed necessary to Petitioner’s showing, we do not include references to the Petition’s citations to Exhibit 1006 or discussion of Exhibit 1006 in our analysis. However, if Petitioner cites to Exhibit 1006 in a passage that we quote, we maintain these citations so that our quotation is accurate and complete.” slip op. at 13

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

    “combination of the disclosures of Chen and Wu and articulates reasons why a skilled artisan would be motivated to combine the relevant teachings of Chen and Wu. See Pet. 42–85. This challenge to the patentability of the claims of the ’595 patent (Ground 2 of the Petition) is detailed and supported by the cited evidence. With regard to this ground and the asserted combination of art, Patent Owner argues that “[s]imilar to Grounds 1A and 1B, Chen and Wu do not show that ‘the bandwidth field of HE-SIG-A is used to obtain information of the unassigned resource unit’ as both the bandwidth field in HE-SIG-A and a subfield in HESIG-B need to be used for explicitly indicating the unassigned resource unit.” Prelim. Resp. 15. The quoted passage is limitation 7.5 and the “explicitly indicat[ing]” element is in limitation 7.7.16 See Ex. 1001, 54:3–4, 54:9–12; see also Pet. vii (showing claim 7 with limitations numbered and labeled). Thus, Patent Owner disputes the same limitations with a similar argument as for the earlier grounds in disputing the showing in the Petition for this ground. With regard to the disputed limitations, the Petition provides that, from a combination of the teachings and suggestions of Chen and Wu, a skilled artisan would understand that “the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels.” Pet. 60 (citing Ex. 1003 ¶ 178). The Declaration of Dr. Buehrer provides: 16 Limitation 7.7 recites: “the unassigned resource unit is explicitly indicated with the information of the unassigned resource unit based on the bandwidth field and the at least one subfield.” Ex. 1001, 54:9–12; Pet. vii (emphasis added). 178. Chen-Wu renders obvious using the bandwidth field of HE-SIG-A to obtain the information of the unassigned resource unit. As one example, a POSITA would have understood the Chen-Wu combination as rendering obvious that RU non-allocation information in HE-SIG-B indicates the location of a non-allocated RU within a 20MHz channel, while the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels. SAMSUNG-1008, [0101], [0098]; SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. 179. Chen teaches that “RU allocation may be determined based at least in part on the PAID, channel bandwidth, and the HE-SIG-B.” SAMSUNG-1008, [0101], [0098]. I note that the Applicant did not dispute the Examiner’s finding that Chen teaches this limitation. See SAMSUNG- 1002, 68, 102 (citing SAMSUNG-1008, [0093], [0098], [0103], Fig. 14). 180. Moreover, Wu teaches “a fixed format common field in the HE-SIGB is defined for each operation bandwidth. Therefore, the length and format of the common field are predefined [based on the bandwidth]. In this approach, there is no [additional] indication needed in the HE-SIG-A.” SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. As I explained above for [7.2] and [7.4], a POSITA would have understood Chen’s HE-SIG-A as including a bandwidth field that indicates the operation bandwidth of the PPDU. See [7.2], [7.4]. 181. For example, if the bandwidth field of HE-SIG-A indicates a PPDU bandwidth of 80 MHz, and the resource unit allocation field of the common field of HE-SIG-B indicates that the 20 MHz corresponding to the fourth channel is partitioned into 106, 26, and 106-tone resource units, the resource unit non-allocation information may indicate that the 26-tone resource unit is not assigned to any user through, e.g., a bitmap per Chen. SAMSUNG-1008, [0075], [0089]-[0093], Figs. 4, 12- 14; SAMSUNG-1009, [0035]-[0043], Figs. 2-4; SAMSUNG- 1010, 2-6, 10-14. Ex. 1003 ¶¶ 178–181 (alterations in original) (footnote omitted). We determine that this testimony of Dr. Buehrer is supported and reasonable and sufficiently persuasive and credible to support institution. We also note that Patent Owner does not, at least at this stage, provide any contradictory expert testimony.17 We have considered Patent Owner’s arguments relating to the disputed limitations and this ground and found them not to be as well-supported as the Petitioner’s showing for essentially the same reasons as discussed above with regard to Ground 1A. Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to the unpatentability of claims 1–12 of the ’595 patent based on a combination of the teachings and suggestions of Chen and Wu.” slip op. at 29

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,470,595

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.