- CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentablePTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand
Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38
Patent outcomesUS 10,647,861 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,647,861 - PTAB · Oct 8, 2025 · IPR2025-00739 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Jaszlics and Rallison.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . 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). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 8, 13, and 20 of the ’277 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 4. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. See Ex. 1001, 2:37–41, 2:61–67, 3:21–23, 8:50–64. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Even if we were to accept Patent Owner’s unsupported contention that the location of Jaszlics’s image processor is outside of the display device, this would result in only two identified, predictable locations of the image processor. The image processor would either be located outside of the display device or inside of the display device. We are persuaded that substituting Rallison’s location of inside the display device instead of outside the display device provides sufficient reason to combine the teachings of Jaszlics and Rallison. See Uber Techs., Inc. v. X One, Inc., 957 F.3d 1334, 1339–40 (Fed. Cir. 2020) (reversing the Board’s determination of lack of motivation “because Okubo’s terminal-side plotting and Konishi’s server-side plotting were both well known in the art, and were the only two identified, predictable solutions for transmitting a map and plotting locations, it would have been obvious to substitute server-side plotting for terminal-side plotting in a combination of Okubo and Konishi”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,179,277 - PTAB · Oct 8, 2025 · IPR2025-00738 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted review of claims 1, 3, and 6–8 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . 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). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 3, and 6–8 of the ’448 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming the benefit of the filing date of an application filed before March 16, 2013, we apply pre-AIA law. 2 U.S. Patent No. 6,166,744 issued Dec. 20, 2000 (Ex. 1003). 3 Int’l Patent Appl. Pub. No. WO 2003/107039 A2 published Dec. 24, 2003 (Ex. 1008). 4 U.S. Appl. Pub. No. 2002/0163486 Al published Nov. 7, 2002 (Ex. 1009) 5 U.S. Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 6 U.S. Appl. Pub. No. 2004/0002843 A1 published Jan. 1, 2004) (Ex. 1007). combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5. Patent Owner at this stage does not challenge Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30–32, 8:31–45, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:56–58), which indicates that the applicant intended “a physical playfield” as claimed to encompass more than a defined or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 11:12–14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case”).” slip op. at 6
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. . . . A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Jaszlics discloses that the “invention relates . . . to systems for combining virtual images with real-world scenes” to provide applications such as virtual reality games (Ex. 1003, 1:13–21), which is the same field as the ’448 patent’s field of “location-based games and augmented reality systems” (Ex. 1001, Title). Turning to Sofer, the purpose of the detector of Sofer is to detect the location of objects in the user’s surrounding environment (Ex. 1008, Abstract; see id. at 2, 6, 11), which is the same purpose as the detector of the ’448 patent (Ex. 1001, 15:4–5; see id. at 1:28–31, 2:5, 16:11–18, 19:54–57). Therefore, Sofer’s detector is reasonably pertinent to the particular problem of detecting the location of objects in the user’s surrounding environment. We are sufficiently persuaded that Jaszlics and Sofer are analogous to the claimed invention.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,744,448 - PTAB · Oct 8, 2025 · IPR2025-00742 · APJ Miriam L Quinn · IPR · Institution
The Board instituted review of claims 1, 6-10, 14, 17, 24-28, and 30 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an 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.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’243 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAOther
“portable device 100 as “portable” even when components of that “device” are integrated in a “non-portable” device, such as a car. Examples of such portable devices are provided as wireless telephones, PDAs, laptops; handheld devices, and music players. Ex. 1009 ¶ 22; See Ex. 1001, 4:22−28 (describing a visor as a portable gaming system); 7:21−27 (listing additionally Blackberries, Personal Electronic Devices, IPODs and any other portable electronic device, to be configured as a gaming system). Taking these disclosures together, the ’243 patent does not define the degree of the “portability” of the claimed device to require that the “portable device” must be completely “free of encumbering external connections.” If “portability” can include integrating a component of the “portable device” into a “non-portable device,” then there is support for holding that the recited “portable device” could be tethered to a non-portable device.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“rotation sensors are found not to be positioned on Levesque’s display, it would have been obvious to do so in light of Ronzani because Ronzani teaches equipping the head-mounted device with external and internal sensors). Petitioner’s arguments and evidence regarding motivation to combine amount to showing that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The inquiry at this juncture is whether Petitioner has shown sufficiently that an ordinarily skilled artisan is “able to recognize, based on her background knowledge, [a technique’s] potential to improve the device and be able to apply the technique.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1003 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A reference that is in the same field of endeavor as the claimed invention is analogous art,5 and such a qualification means that one of ordinary skill in the art is presumed to have been aware of the reference and thus the refence properly may be considered if it predates the claimed invention. See Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Petitioner contends that the field of endeavor of the claims of the ’243 patent is “the field of portable user-worn devices for providing location based-entertainment.” Pet. 19−20. According to that description of the relevant field of endeavor, Petitioner argues that both Levesque and Ronzani are analogous to the ’243 patent. Id. Patent Owner appears to argue that the field of endeavor is “video games.” Prelim. Resp. 29−30. This is not the correct field of endeavor because although the claim recites a location based game system, the claims considerably focus on the head-mounted device. Indeed, for claim 1 all the structural elements claimed involve or are placed in the head-mounted device. Thus, “video games” generally is not an appropriate field of endeavor, as it is too broad and ignores the significant focus of the claims of the ’243 patent. Petitioner’s statement of the field of endeavor is, therefore, more indicative of the correct field of endeavor involved here. And as such, it is unpersuasive to argue that Ronzani does not belong to the field merely because it is not solely focused on video” slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,904,243 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - Alliance Laundry Systems, LLC v. Payrange LLCInstitution deniedPTAB · Oct 1, 2025 · IPR2025-00573 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 7 or 11 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’772 patent. Accordingly, we do not institute an inter partes review of claims 7 and 11 of the ’772 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person having ordinary skill in the art (“POSA”) pertaining to the ’772 patent “would have had an educational background of, engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 19–20; Ex. 1003 ¶¶ 20–26. “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’772 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms expressly to determine whether or not to institute a trial. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,481,772 - PTAB · Sep 25, 2025 · IPR2025-00741 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1, 12, 17, and 20 of the ’493 patent on all asserted §103 grounds, finding a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we determine that Petitioner has shown a reasonable likelihood of prevailing on its contentions of obviousness for claim 1 of the ’559 patent and claim 1 of the ’493 patent.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,376,493 - PTAB · Sep 25, 2025 · IPR2025-00740 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR of claims 1, 12, 17, and 20 of both patents on all asserted § 103 grounds, finding a reasonable likelihood that at least one claim of each patent is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated in this Decision, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’559 patent and at least one claim of the ’493 patent are unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the instant Petitions. 37 C.F.R. § 42.108(a).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill, would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a 2 US Patent No. 6,166,744, issued Dec. 26, 2000 (Ex. 1003). 3 US Patent No. 6,369,952 B1, issued Apr. 9, 2002 (Ex. 1004). 4 WO 03/107039 A2, published Dec. 24, 2003 (Ex. 1008). 5 US Patent Application US 2002/0163486 A1, published Nov. 7, 2002 (Ex. 1009). person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. 740 Pet. 4 (citing Ex. 1002 ¶¶ 21−25); 741 Pet. 4. Patent Owner does not propose a level of ordinary skill. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“At this stage, we do not find Patent Owner’s proposed construction persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” The Paper 10 in the 740 IPR; and Patent Owner filed a Preliminary Sur-reply, filed as Paper 11 in the 740 IPR. Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Ex. 1001, 2:38−40, 2:63–3:2, 3:23–25, 6:11−13, 6:46−48, 8:48– 62, 9:23–28, 20:28−58, 22:1−4. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (740 Ex. 1001, 1:58−60), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” 740 Ex. 1001, 11:12−14. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing a physical playfield with defined boundaries, or a “bounded” playfield, as well as a physical playfield with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Second, Petitioner’s explanation of its alternative theory—that Rallison is evidence of the knowledge that a head-mounted display would include a processor—provides sufficient rational underpinning for the combination of teachings. Petitioner proffers that a person of ordinary skill in the art would have understood that including a processor in a head-mounted display is a known technique to improve a similar device (Jaszlics’s visor) in the same way and predictably. 740 Pet. 15 (citing Ex. 1004, 10:4−14; 740 Cooperstock Decl. ¶ 80). We do not find at this juncture that this argument is unsupported or speculative, as Patent Owner argues. Additionally, we understand Patent Owner’s arguments—that Jaszlics system would have no need for incorporating a processor in the visor as taught by Rallison—as contentions that Jaszlics either teaches away from such a combination or the benefits of such a configuration are outweighed by significant drawbacks. These contentions are underdeveloped and unsupported. Petitioner’s argument and evidence, at this juncture, reasonably explain the reasons to combine under precedent that there is a motivation to combine when “a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way.’” See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). The location of the processor in the head-mounted display of Jaszlics does not need to be the best option, so long as it is a suitable option. See PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). Finally, as for Rallison and Jaszlics’s alleged incompatibility, we are not persuaded that more evidence is needed at this juncture for details on the modification of Jaszlics to include the processor of Rallison. Such argument amounts to a bodily incorporation argument, and our analysis focuses rather on whether a person of ordinary skill in the art would have been motivated to combine the “teachings” as alleged. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Indeed, we note the evidence presented by Petitioner that a head-mounted display’s use of electronics to generate the displayed video images was well known. 740 Cooperstock Decl. ¶ 82; Ex. 1004, 10:4−14.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,828,559 - PTAB · Sep 25, 2025 · IPR2025-00737 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted IPR of claims 1, 2, 4–7, 13, and 17 on all asserted grounds, finding a reasonable likelihood that Meta would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review may not be authorized by statute “unless . . . 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). Upon consideration of the Petition and the Preliminary Response, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1, 2, 4–7, 13, and 17 of the ’476 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information (such as GPS information associated with a user’s physical location), and in designing 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), includes revisions to Section 103 that became effective on March 16, 2013. Because the challenged claims issued from an application claiming priority to an application filed before March 16, 2013, we apply pre-AIA law. 2 US Patent No. 6,166,744 issued Dec. 26, 2000 (Ex. 1003). 3 Wayne Piekarski et al., “Integrating Virtual and Augmented Realities in an Outdoor Application,” Proceedings of the 2nd IEEE and ACM International Workshop on Augmented Reality (1999) (Ex. 1004). 4 US Patent No. 6,361,438 B1 issued Mar. 26, 2002 (Ex. 1006). 5 US Patent No. 6,951,515 B2 issued Oct. 4, 2005 (Ex. 1005). 6 US Publ. No. 2004/0002843 A1 published Jan. 1, 2004 (Ex. 1007). 7 WO 01/42809 A2 published June 14, 2001 (Ex. 1008). and/or developing computer systems/software involving graphical virtual and/or augmented reality. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. (EX1002, ¶¶21-25.) Pet. 5–6. Patent Owner, at this stage, does not challenge Petitioner’s definition of the level of ordinary skill. See generally, Prelim. Resp. As Petitioner’s definition of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. The claim does not recite “a defined physical playfield.” Rather, the claim recites “a physical playfield.” Ex. 1001, 21:6– 7; 22:26–27. The Specification’s discussions of “playfield” cited by Patent Owner use non-limiting language such as “for example” and “may” in describing the playfield. Id. at 2:32–36, 2:55–61, 3:14–16, 5:63–65, 6:30– 32, 8:30–44, 9:4–9, 19:60–20:22, 22:5–6. The disclosed examples of “a physical playfield” include “the physical world, a physical environment, or a defined physical playfield” (Ex. 1001, 1:51–53), which indicates that applicant intended “a physical playfield” as claimed to encompass more than a defined, or “bounded” physical playfield. This indication is consistent with the Specification’s disclosure that “the game world corresponds to an actual area of the physical world (such as the planet Earth or New York City).” Ex. 1001, 10:58–61. Thus, in one disclosed embodiment, the physical playfield is the entire (unbounded) world. We are persuaded that the Specification’s descriptions of various embodiments with defined playfields and undefined playfields support construing the scope of a “physical playfield” as encompassing defined boundaries, or a “bounded” playfield, as well as a “physical playfield” with undefined boundaries, or an “unbounded” playfield. Limiting the claim term to only “bounded” play spaces would read out broader embodiments from the claim scope. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that interpreting a claim to exclude an embodiment disclosed in the written description “is rarely, if ever, correct and would require highly persuasive evidentiary support, which is wholly absent in this case.”). We, therefore, agree at this juncture with Petitioner’s claim construction analysis, and note that the alleged goal of improving the safety in virtual reality gaming does not support Patent Owner’s construction. Paper 10, 2 (Petitioner arguing that by describing an augmented reality system where a user can view the physical surroundings, a “bounded” physical playfield is not necessary). Further, we find unpersuasive, at this juncture, Patent Owner’s arguments related to embodiments of how the information about the playfield is captured and stored to construct the playfield and perform scaling. Prelim. Resp. 7−13. As Petitioner notes, and we agree, none of these features are recited in the independent claims. Paper 10, 2. And, to the extent there is a distinction between being “on” or “off” the “physical playfield” as Patent Owner argues, the claim language requires no such determination or detection.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“physical playfield” as properly construed. Prelim. Resp. 30. As discussed in our claim construction above, we are not persuaded that the claim term “physical playfield” is limited to a bounded physical play space. However, even under the Patent Owner’s proposed narrower construction, we are sufficiently persuaded that the combination teaches a bounded physical play space. Jaszlics discloses that its system creates virtual elements in theme parks and entertainment-oriented environments. Ex. 1003, 2:14–16, 2:67– 3:1; see id. at 18:48–55. We are sufficiently persuaded that a theme park is a bounded physical play space. In addition, Jaszlics discloses training armored vehicle crews by using both virtual vehicles and actual vehicles moving over real terrain. Ex. 1003, 1:38–60. We are sufficiently persuaded that a skilled artisan would have envisioned that such training occurs on a military base, which is bounded.8 Jaszlics further discloses that its training field includes boundary markers. Ex. 1003, Fig. 15, 10:1–9. We are sufficiently persuaded that the tank training field of Jaszlics, which has boundary markers and is located on a military base, is a bounded physical play space. Therefore, even under Patent Owner’s narrower construction, we are sufficiently persuaded that a person of ordinary skill would have recognized that a user would have played at least some of the video games provided by the combined system of Jaszlics and Piekarski in a bounded physical play space such as a theme park or a military base. slip op. at 9
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,585,476
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.