- PTAB · Apr 23, 2025 · IPR2024-01372 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–5 and 14–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Niikawa and Enomoto.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In determining whether to exercise this discretion based on a related litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co. v. Intri- Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). challenged on the same ground in the Canon IPR—obviousness over Niikawa. Canon IPR, Paper 9 at 3. Thus, Patent Owner’s request fails under the first prong of Advanced Bionics. Moreover, the Board denied the Canon IPR largely due to the immediacy of an upcoming district court trial. Id. at 5–11. Thus, even if Patent Owner’s request did not fail under the first prong of Advanced Bionics, the request would fail under the second prong, which considers Becton, Dickson8 factors (c) and (f). Advanced Bionics, Paper 6 at 10. Factor (c) “focuses on the record developed by the Office in previously reviewing art or arguments” and informs “the petitioner’s showing under factor[] . . . (f).” Id. Factor (f) considers the extent to which the facts and evidence in the Petition warrant reconsideration of the prior art. Becton, Dickenson, Paper 8 at 24–25.” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“whether to institute review in light of a previously filed inter partes review challenging the same patent. See Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–16 (PTAB Sept. 6, 2017) (precedential). Principal among them is the first factor—“whether the same petitioner previously filed a petition directed to the same claims of the same patent.” Id. at 16. This factor has been extended to consider not only whether the petitioner is the same as a previous petitioner, but whether the petitioner has “a significant relationship” with the previous petitioner. See Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9– 10 (PTAB Apr. 2, 2019) (precedential). The Director has found that when two petitions challenge the same patent and “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic (PTAB Apr. 19, 2024) (emphasis added). Petitioner and Sony are not the same party and the entities that constitute Petitioner contend that they “lack any legally significant relationship” with Sony. Pet. 86. Patent Owner does not dispute this. Prelim. Resp. 1–4. Given these facts and the Director’s Videndum guidance, we decline to discretionarily deny the Petition due to the Sony IPR. See Videndum, Paper 12 at 5–6.” slip op. at 29
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“discuss below, we find Petitioner provides sufficient reasoning with a rational underpinning to support at this stage of the proceeding Petitioner’s contentions regarding modifying Niikawa based on the teachings of Enomoto. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 39
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,451,339 - PTAB · Apr 1, 2025 · IPR2024-01396 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 1–19 under all petition grounds, finding a reasonable likelihood of success on obviousness; the majority declined Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“independent claims’ features. The vast majority of Petitioner’s assertions are uncontested at this stage. Further, Petitioner’s evidence shows that Bennett discloses “a first network stack Application Programming Interface (API), containing at least one first call accessible to each of a plurality of device applications, the first network stack API callable by each of the plurality of device applications to open and use data packet flows via the network stack, the wireless modem, and the at least one wireless network,” which is the only limitation that Patent Owner disputes at this stage of the proceeding. See infra, Section III.2. For the sole feature missing from Bennett—i.e., application-based data usage monitoring—Petitioner presents clear and uncontested evidence, backed by multiple prior art references, that the technique and its benefits were well known, as outlined below. Petitioner also articulates, with clear support from its expert and the prior art, not just one but several reasons that would have motivated a skilled artisan to combine Vadde’s application-based data monitoring technique in Bennett. For these reasons, we determine that the merits of at least one ground raised in the Petition are particularly strong. Thus, this factor weighs against exercising discretion to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenge Petitioner’s obviousness analysis. We have reviewed Petitioner’s arguments and the underlying evidence cited in support and we are persuaded that, at this stage, Petitioner sufficiently demonstrates a reasonable likelihood of succeeding in its obviousness challenges to the challenged claims.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communication network applications and software.” Pet. 2. Further, “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 8. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’918 patent.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“modem, network stack, and Application Programming Interfaces. Pet. 19– 29. Petitioner further relies on Bennett for its disclosure of routing network data via a first network stack application programming interface (“API”) or a second API call to a proxy media service manager that interfaces with the network stack. See id. at 29–43. Petitioner adds Vadde for teaching managing data traffic for applications using a policy-based system that enforces restrictions based on an application’s data usage. Id. at 44–57. With support from its expert Dr. Traynor and a number of prior art references, Petitioner explains that “the benefits of data usage monitoring were well-known prior to the ’918 Patent and would have been part of a POSITA’s general knowledge.” Id. at 15 (citing Exs. 1003, 1044, 1045, 1062, 1063). Petitioner articulates a number of those benefits including, for example, to facilitate identifying and restricting data-intensive applications to reduce battery usage and to facilitate greater control over data-intensive application activities that risk degrading networks high costs for users. Id. at 15–17 (citing Exs. 1003, 1041, 1042, 1046). In addition, Petitioner explains that adding per-application data usage monitoring to Bennett’s device “would have enabled device manufacturers and service providers to incorporate additional applications and functionality into wireless devices while allowing users to retain control of aggregate device data usage.” Id. at 17 (citing Exs. 1003, 1042). Petitioner adds three references, Riggs, Hendrickson and Srikantan, for their disclosures of various dependent claim features including log generators/reports, storing data associated with played media content, and a network resource indicator that identifies the media object. Pet. 58–95.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,647,918 - K/S Himpp v. Bragi GmbHAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-01205 · APJ Stacey G White · IPR · Final written decision
Claims 1–14 were held unpatentable over the asserted prior art, and the revised motion to amend was denied because proposed substitute claims 15–28 were also unpatentable.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–14 of the ’688 patent are unpatentable.15 In addition, we determine that Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 15–28 are unpatentable. Our determinations are summarized below.” slip op. at 89
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“(d) Conclusion for Obviousness of Claim 15 For the reasons provided above, Petitioner has sufficiently shown that each of Petitioner’s asserted grounds (Hain in combination with Rass, Hain in combination with Shaffer and Rass, Hain in combination with Aumer, and Hain in combination with Shaffer and Aumer) renders proposed substitute independent claim 15 obvious. We have considered Patent Owner’s arguments and we do not agree for the reasons addressed above. Accordingly, we are persuaded that Petitioner has shown, by a” slip op. at 79
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“D. Anticipation by Hain Petitioner asserts that claims 1, 2, and 4 are unpatentable under 35 U.S.C. § 102 as anticipated by Hain, citing the Declaration of Dr. Kiaei for support. Pet. 17–29 (citing Ex. 1002). Patent Owner declined to file a Patent Owner Response and waived all arguments as to Petitioner’s challenges to the original claims. Tr. 35:9–16. In the absence of arguments and evidence from the Patent Owner, we still review Petitioner’s assertions to ascertain whether Petitioner has met its burden to establish the unpatentability of the original claims by a preponderance of the evidence. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For the reasons explained below, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that claims 1,2, and 4 are anticipated by Hain. 1. Independent Claim 1 Petitioner’s argument regarding the teachings of Hain in regards to” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableUnpatentable
“E. Obviousness over Hain and Shaffer Petitioner asserts that claims 1–6, 8–12, and 14 are unpatentable under 35 U.S.C. § 103 as obvious over Hain and Shaffer, citing the Declaration of Dr. Kiaei for support. Pet. 29–61 (citing Ex. 1002). We have reviewed Petitioner’s arguments and evidence and based on the evidence in the complete record, we are persuaded that Petitioner has shown by a preponderance of the evidence that claims 1–6, 8–12, and 14 would have been obvious over the combination of Hain and Shaffer. For example, Petitioner’s arguments regarding independent claim 1 may be summarized as follows: Petitioner asserts that Shaffer teaches the preamble7 of claim 1, which recites a method for power control of a wireless earpiece. Pet. 29–31 (citing Ex. 1003 ¶¶ 32, 34, 62, 63, Figs. 3A, 10; Ex. 1002 ¶¶ 56–57). Petitioner contends that Shaffer’s wireless earbuds 1010 and 1012 are powered down automatically when they are placed into their storage case 11. Id. at 30. Specifically, Petitioner argues that Shaffer’s earbuds enter a low power mode in response to a magnetic sensor detecting that the earbuds are in their storage case. Id. at 31. Petitioner further contends that Shaffer in view of Hain teaches” slip op. at 20
Patent outcomesUS 10,397,688 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,397,688 - PTAB · Mar 6, 2025 · IPR2024-01223 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).” slip op. at 5
- Parallel petitionsNot reached
“B. Denial Based on Multiple Petitions Patent Owner asserts we should deny the petition in IPR2024-01222 because it is one of two petitions challenging the same claims of the ’389 patent. See Paper 7, 3. Patent Owner does not, however, argue we should deny the Petition in this case. See id. (arguing that “to the extent a trial is warranted, the Board should institute . . . [only] the IPR2024-01223 petition.”). Because Patent Owner contends only that we should deny the petition in IPR2024-01222, we do not address that issue here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“C. Claim Construction 1. “depositing by shadow mask, sputtering, ink jet deposition, screen printing evaporation” Claim 40 recites “wherein the step for selectively depositing at least one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 15 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 6–7. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “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). For the reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - Olympus Corporation / Om Digital Solutions Corporation et al. v. Optimum Imaging Technologies, LLCInstitutedPTAB · Feb 24, 2025 · IPR2024-01220 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds, finding a reasonable likelihood that claim 1 would be shown unpatentable as obvious over Iwasawa.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has provided such a stipulation to Patent Owner. Pet. 79 (citing Ex. 1025); see also Ex. 1025, 1 (Petitioner promising that if we institute “an IPR based on the grounds identified [above], then it will (i) not pursue the grounds identified [above] in the respective District Court Case, and (ii) not pursue any other ground that reasonably could have been raised during the IPR . . . in the respective District Court Case.”). In view of Petitioner’s stipulation and the Director’s guidance, we deny Patent Owner’s request for discretionary denial due to the related district court cases. See Ex. 1025, 1; Fintiv Memo 3.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Petitioner here is not the same petitioner (Sony) that previously filed a petition in IPR2024-00923. Moreover, the entities that constitute Petitioner contend that they “lack any legally significant relationship” with Sony. Pet. 77. Petitioner further contends that discretionary denial is not warranted under General Plastic factor six because “this Petition raises references not cited to in the Sony IPR.” Id. at 78. Patent Owner does not dispute any of these contentions. Prelim. Resp. 2–3. Because the entities that comprise Petitioner and Sony are neither the same party nor significantly related parties under Valve, and because the entities that comprise Petitioner and Sony have individual rights to defend themselves from allegations of patent infringement by challenging the validity of the ’685 patent here and in district court, we deny Patent Owner’s request for discretionary denial due to the petition filed in IPR2024-00923. See Videndum, Paper 12 at 5–6; 35 U.S.C. §§ 282(b)(2), 311, 315.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and argument presented, we preliminarily find Petitioner has articulated sufficient reasoning with a rational underpinning to modify Iwasawa’s Figure 2 embodiment with elements from Figures 1 and 6. Iwasawa discloses correction data can either be precalculated and stored in ROM or calculated and stored in RAM. Storing pre-calculated correction data for known lenses in ROM would be faster than calculating such data at execution time and storing it in RAM, but calculating the correction data at execution time and storing it in RAM would be useful for performing new corrections for new lenses or updating the corrections for known lenses. Moreover, the combination is one of familiar elements according to known methods to achieve predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“reasons, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. GPAC Inc., 57 F.3d at 1579. Accordingly, at this stage of the proceeding, we adopt as our own Petitioner’s description of a person skilled in the art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,873,685 - PTAB · Feb 18, 2025 · IPR2024-01187 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, 8–11, and 16 on all asserted grounds, finding a reasonable likelihood that Hanamura renders claim 16 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Statute provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. §314(a). For the reasons explained below, we determine that Petitioner has shown that there is a reasonable likelihood of prevailing with respect to at least one challenged claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“district court proceeding. See supra § I.C. In its Preliminary Response, Patent Owner presents argument regarding the Fintiv factors and urges the Board to exercise its discretion under 35 U.S.C. § 314(a) to deny institution. Prelim. Resp. 43–46. Subsequent to the Preliminary Response, Petitioner filed its Preliminary Reply as well as a stipulation. The Preliminary Reply provides that “[i]f the Board institutes this IPR, Defendants in Pictiva Displays Int’l Ltd. v. Samsung Elecs. Co., No. 2:23-cv-0495 (E.D. Tex.), stipulate not to pursue invalidity defenses based on grounds that were raised or reasonably could have been raised in this IPR.” Reply 1. Similarly, the stipulation provides as follows: Defendants hereby stipulate that, if the Patent Trial and Appeal Board institutes an inter partes review proceeding for U.S. Patent No. 9,257,492 on the grounds presented in the petition in IPR2024-01187, then Defendants will not pursue an invalidity defense in this case that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating requests for discretionary denial, the Board must determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on both grounds. See SAS Q&As, D1 (USPTO June 5, 2018)6 (cited with approval in Boehringer Ingelheim Animal Health Usa Inc., v. Kansas State University Research Foundation, PGR2022-00021, Paper 11 (Feb. 24, 2023) (Director Review) at 7–8 n. 3). “At bottom, this [§ 325(d)] framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics at 9. Here, § 325(d) is not sufficiently implicated that its statutory purpose would be undermined. While prior art similar to one reference presently relied upon in Ground I was considered during prosecution, Patent Owner does not contend that the asserted references in Grounds II or III are the same or cumulative of art that was considered during prosecution. Because it 6 www.uspto.gov/sites/default/files/documents/sas_qas_20180605.pdf is undisputed that two of the three asserted grounds do not implicate § 325(d), on balance, we determine that the Petition does not raise the same or substantially the same prior art previously presented to the Office. See Asetek Danmark a/s v. Coolit Sys., Inc., No. IPR2020-00825, Paper 12 at 15 (PTAB Oct. 13, 2020) (Decision on Institution) (determining to institute where, “viewing the Petition as a whole, we find that only two of the six asserted grounds . . . implicate § 325(d).”). As a result, we decline to exercise our discretion under section 325(d) to deny institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in Electrical Engineering, Physics, or a comparable field of study, and at least three years of research or industrial experience with semiconductor (organic or inorganic) optoelectronic devices and/or lighting or displays. An individual with additional education could have less research or industrial experience and vice-versa. Pet. 9. For purposes of institution, Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 6 (“Solely for purposes of this Preliminary Response, Pictiva applies the skill level proposed by Petitioner.”). Accordingly, for purposes of institution, we adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,257,492 - PTAB · Jan 23, 2025 · IPR2024-01095 · APJ Michael G Mcmanus · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that claim 9 is unpatentable over Suzuki and Caldwell.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We agree with Patent Owner that this second factor favors denial based on the trial date set for the District Court action, as well as the District Court’s median time-to-trial data.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. REASONABLE LIKELIHOOD OF PREVAILING Although we have closely reviewed each asserted ground, in evaluating Petitioner’s reasonable likelihood of prevailing, we focus our discussion on Ground IX, which concerns the asserted unpatentability of claim 9. As claim 9 depends from claim 1, we additionally discuss that claim. We determine that Petitioner’s arguments regarding claim 9 demonstrate a reasonable likelihood of prevailing with respect to at least one claim.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Caldwell teaches that “[b]ecause backlighting can be advantageously aligned with an operative touch surface, it is sometimes desirable to locate a touch sensor in close proximity to and/or atop a light emitting device.” Ex. 1011 ¶ 6; see Pet. 74. Petitioner argues that integrating a touch sensor into a light emitting device can “greatly reduce the cost and complexity of using backlighting with touch sensors” and can “reduce or eliminate the extra material and manufacturing cost associated with the separate touch sensor and lighting assemblies known in the art, which must be electrically coupled and aligned.” Pet. 74 (quoting Ex. 1011 ¶ 7). Petitioner argues that such reduction of cost and complexity, as well as a desire for a thinner OLED profile, would have motivated one of skill in the art to combine touch sensor functionality into the device of claim 1. Id.; see also Ex. 1003 ¶¶ 241, 242.” slip op. at 22
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,828,425 - PTAB · Jan 23, 2025 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted review of claims 1–4, 6, and 8–14 on all asserted grounds; Petitioner showed a reasonable likelihood that claim 1 is obvious over Ma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), the Board declined to exercise its discretion to deny review under Fintiv where the patent owner stipulated “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Paper 12 at 18. Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).6 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid 7 Following the parties’ convention, when citing Exhibit 1007, we refer to original page numbers, not page numbers added by Petitioner. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to our decision whether to institute review. Pet. 15; see generally Prelim. Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Jan 23, 2025 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–16 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated by Choulis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).8 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“to the meaning of particular claim terms.”). Claim 1 recites first, second, and third matrix materials but, aside from reciting relationships between the LUMOs and HOMOs of the matrix material, does not require any particular composition or any particular amount for any of the three matrix materials. Ex. 1001, 9:4–22. Nor does claim 1 recite that any of the matrix materials must be present in a continuous phase. Id. Claim 1 does recite that the organic functional layer, which includes the three matrix materials, is doped with at least one emitter material. Id. at 9:21–22. On this record, no words in claim 1 limit a “matrix material” to the meaning advanced by Patent Owner.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,723,164
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.