• Lenovo (United States) Inc. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Feb 18, 2025 · IPR2024-01226 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Lenovo had not shown a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “identifies and refers to a valid region of the integrated circuit memory device as having a three-dimensional boundary delimited by phase ranges in command/address signals, data signals, and sampling signals. Nowhere does the ’835 patent specification indicate a valid region of the integrated circuit device as a whole can be represented by values for less than three parameters x, y, and z, all together, e.g., the command signals, the data signals, and the sampling signals. Also, the ’835 patent describes that the purpose of determining the boundaries of a valid region is to configure an optimal operating point for the integrated circuit device. Ex. 1001, 5:48–51. We have also considered other language in the claims. Each of independent claims 1 and 7 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operation range.” Ex. 1001, 6:56–7:4, 7:18–34. Each of independent claims 12, 20, and 23 requires adjustment of the phase of all three command signals, data signals, and sampling signals, to determine the “valid operating range.” Ex. 1001, 7:46–60, 8:28–44, 8:62–10:4. Based on the foregoing, the specification informs us that “valid operation range” is a three-dimensional range. We recognize that the specification does not expressly exclude a two-dimensional range or multiple two-dimensional ranges from being a “valid operation range” of the integrated circuit device. However, that is why we construe the claims to determine what, if anything, may be required despite a lack of express recitation in the claims.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Level of Ordinary Skill in the Art Citing testimony from Dr. Baker, Petitioner asserts a person of ordinary skill in the art (hereinafter “POSITA”) “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Pet. 4 (citing Ex. 1002 ¶¶ 31–35). Patent Owner’s expert, Mr. Lee, testifies: “I agree with Petitioner that [Petitioner’s statement of the level of ordinary skill] would be the minimum qualifications for a POSITA.” Ex. 2001 ¶ 35. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, i.e., that a POSITA “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and two to three years of experience designing high speed computer memory devices.” Ex. 1002 ¶ 34. The stated level is supported by the testimony of Dr. Baker and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 12

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

    “Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31

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

    “Petitioner still has not made a sufficient showing for limitation [1.4.a]. That is because Petitioner has, at best, identified only two 2-parameter valid operation ranges, i.e., an operation range involving just command and sampling signals, and an operation range involving data and sampling signals. Pet. 29–34. This does not satisfy “valid operation range” as we have construed above in Section III.C. Specifically, we determined that “valid operation range” is a three-dimensional range including a boundary for each of three underlying parameters which, for example, may be the phases of the command signals, the data signals, and the sampling signals. Nowhere has Petitioner identified or explained how Johnson discloses a valid operation range that is a function of three parameters together, e.g., the respective phases of command signals, data signals, and sampling signals. In addition to the foregoing, Petitioner’s reasoning for adjusting the phase of clock signals DCLK, which Petitioner regards as sampling signals, to synchronize with the phase of data signals on the DQ data bus is unpersuasive, because Johnson, as Petitioner has recognized, already adjusts the phase of data signals on the DQ data bus to synchronize with clock signals DCLK. Pet. 32 (citing Ex. 1002 ¶ 136; Ex. 1004, 4:55–59, 6:46–48, 7:25–31, 7:36–42). The proposed adjustment is redundant and serves little, if any purpose. Petitioner has not proposed to stop adjusting the data signals relative to DCLK. Nor has Petitioner articulated a reason to do the adjustment in both directions, i.e., adjusting the data signals relative to the sampling signals and adjusting the sampling signals relative to the data signals. We have also determined above, in discussing limitation [1.3], that Petitioner has not sufficiently shown that Johnson’s CCLK signal is a sampling signal. Further, we agree with Patent Owner (Prelim. Resp. 24) that neither delay 55 nor delay lock loop 41 in Johnson’s Figure 4 is used for systematic calibration of any signal or in a signal calibration process. We find that the mere presence of a delay element in a signal path does not reasonably suggest systematic calibration. For the foregoing reasons, Petitioner has not sufficiently shown that” slip op. at 31

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,646,835
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 14, 2025 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1, 7, 9, 32, 38, and 40 are unpatentable as anticipated by Spain and obvious over Spain as evidenced by Agiwal.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems. That person would have at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 18 (citing Ex. 1008 ¶ 44). Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. PO Resp. 13. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the application and provisional application for the ’753 patent were filed before this date, the pre-AIA version of §§ 102, 103 apply. See Ex. 1001, codes (22), (60). Petitioner does not dispute that the filing date of the provisional application filing date applies. See Pet. 6; see generally Pet. Reply. 2 US 2003/0064735 A1, published April 3, 2003 (Ex. 1006). 3 Ankur Agiwal, LOCATOR – Location Estimation System For Wireless LANs, WMASH 2004: Proceedings of the Second ACM International Workshop on Wireless Mobile Applications and Services on WLAN Hotspots, 102–109 (2004) (Ex. 1005). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “We agree with Petitioner that Patent Owner’s additional requirements of evaluating the calibration data to determine the boundaries of the area should not be included in the construction of “grid point.” Instead, based on the full record, and for the reasons explained below, we discern no reason to alter our prior construction in the Institution Decision of “grid point” as “a point associated with representative calibration data for an area.” Dec. 22– 23.” slip op. at 17

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “The evidence supports that Petitioner has sufficiently demonstrated that Spain teaches “generating one or more sets of grid points for said calibration data,” as recited in limitation [1.2]. Spain states that: In another embodiment, the database is built by taking fingerprint measurements at predetermined locations and using intelligent algorithms that interpolate the fingerprints at all locations in between the sampled locations. Ex. 1006 ¶ 101. Relevant to this disclosure, Mr. Williams testifies that “Spain discloses generation of sets of grid points wherein each set includes newly interpolated grid points” because “the two grid points used to interpolate an additional grid point or points and the generated additional grid point or points are collectively a generated ‘set’ of grid points (i.e., a ‘set’ which includes the two calibrated grid points and the associated interpolated grid points).” Ex. 1008 ¶¶ 76–77 (citing Ex. 1006 ¶¶ 54, 55, 101). It is not disputed that Spain’s “fingerprints” are calibration data having characterizing parameters, such as observed signal strength, observed at calibration points. See Ex. 1006 ¶ 35. We find that this evidence demonstrates that Spain discloses generating one or more grid points, where the grid points are associated with calibration data.10 Accordingly, the evidence provides support that Spain’s interpolation of fingerprints at different locations discloses generation of one or more sets of grid points, where the grid points are associated with calibration data. Spain also discloses that: . . . the fingerprint corresponds not to one exact spot on the surface of the earth, but instead to a small area. The Lat and Long fields in this embodiment indicate a position inside the area, preferably the center point.” slip op. at 33

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

    “2. Discussion Petitioner refers to Agiwal to note that, like Spain, “Agiwal discloses an initial approximate location-based search of its database using live measurement data transmitted from a mobile device.” Pet. 18. Petitioner, however, relies only on Spain for its obviousness assertions. Id. at 22–38. The above discussion and Petitioner’s showing related to anticipation by Spain also equally apply to the obviousness showing over Spain as presented by Petitioner. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Patent Owner presents no additional arguments specifically directed to Petitioner’s showing as to obviousness under Spain that we have not already addressed. See generally PO Resp. Patent Owner also presents no evidence of objective indicia of nonobviousness. See generally PO Resp. Weighing the record as a whole in view of the findings and analysis above, we conclude that Petitioner has met its burden to show, by a preponderance of the evidence, that claims 1, 7, 9, 32, 38, and 40 would have been obvious over Spain as evidenced by Agiwal.” slip op. at 43

  Patent outcomesUS 8,406,753 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,406,753
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 14, 2025 · IPR2023-01211 · APJ Brian D Range · IPR · Final written decision

  Claims 4 and 26 are unpatentable: claim 4 is anticipated by Shkedi, and claims 4 and 26 are obvious over Zhu and Spain.

  RulingsFinal written decision

  • Prior constructionPrior construction adoptedDecided for petitioner

    “requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’494 patent. Namely, the ’494 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:58–4:2. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’494 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim words “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Id. at 18–20.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 11–12. We adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. 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 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also credit Mr. Williams’s testimony that determining which calibration data is representative of an area “would not require analysis” because “[i]t could be just the actual measurement,” and “analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:10–22. Patent Owner’s argument that this testimony is not instructive because Mr. Williams limited his responses to the construction of calibration data and avoided responding to the question asked is not persuasive. See Sur-reply 8–9. Although Mr. Williams did refer to “the calibration data construction” in his response, we disagree that he avoided responding to the question asked. He was asked: “To determine which of that calibration data is representative of an area would require analyzing that set of collected calibration data, right?” and directly responded: “It would not require analysis. It could be just the actual measurement.” Ex. 2023, 37:10–16. This testimony responded to the question asked. He then stated: “I believe that is an issue as part of the calibration data construction,” before concluding: “So analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:17–22. Merely expressing a belief that the issue or question asked relates to the calibration data construction does not equate to his response being limited to the calibration data construction.” slip op. at 23

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Thus, “grid points” and “calibration points” in the ’494 patent are distinct elements that can overlap. Specifically, a “grid point” is a point associated with representative calibration data for an area, and a “calibration point” is a point at which calibration data is collected. These points can occupy the same physical location (i.e., the same longitude/latitude coordinates) but still be a “grid point” and a “calibration point.” For these reasons, we are not persuaded that the overlap between “grid points” and “calibration points” in Shkedi undermines Petitioner’s position and evidentiary showing. Petitioner, thus, has established by a preponderance of the evidence that Shkedi teaches each element of claim 4 including non-uniform grid points. We determine that the preponderance of the evidence establishes that claim 4 is anticipated by Shkedi.” slip op. at 42

  Patent outcomesUS 8,786,494 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,786,494
• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “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. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to 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.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

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

    “Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,089,443
• Lenovo (United States), Inc. v. University Of Rochester (Intellectual Ventures I LLC)Instituted
  PTAB · Feb 13, 2025 · IPR2024-01225 · APJ Thu A Dang · IPR · Institution

  The Board instituted IPR on claims 1 and 3–12 across seven § 103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.

  RulingsInstitution decision

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2

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

    “At this stage of the proceeding, we do not perceive a need to construe any claim terms of the ’443 patent for purposes of determining whether to institute trial. See, e.g., 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 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”))); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Baker, contends that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, and 2–3 years of experience designing computing circuits and systems,” wherein “[m]ore practical experience could offset the aforementioned education and vice-versa.” Pet. 4 (citing Ex. 1002 ¶¶ 29–31). At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10

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

    “We find unavailing Patent Owner’s arguments, which turn on the contention that Georgiou’s clock signals are generated as integer or fractional multiples or divisions of a master clock, and thus, Georgiou “fail[s] to provide the independence required by the Challenged Claims.” Prelim. Resp. 39. In particular, we find unavailing Patent Owner’s argument that clock signals generated based on a master clock are not generated independently of the clock signals generated for others of the plurality of domains.” slip op. at 20

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,089,443
• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Final written decision

  Claims 1–18 are unpatentable as obvious over Cook and Bennett because the combination teaches the claimed wireless power system and provides reasons to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’687 patent, we apply the pre-AIA version of § 103. wireless energy transfer,” but “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 37– 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 9–10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

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

    “1. Confirm compatibility of the resonators and provide authorization for initiation of transfer of power Patent Owner proposes construing the phrase “confirm compatibility of the resonators and provide authorization for initiation of transfer of power” in independent claims 1, 7, and 13 to mean “verify that parameters of the resonators will permit power transfer and provide authorization prior to initiating the transfer of power.” PO Resp. 7. Patent Owner argues that the claim language “recit[es] two functions—confirming resonator compatibility and providing authorization,” which “indicates that confirming compatibility of the resonators must be different than providing authorization.” Id. at 7–8. Patent Owner also argues that the specification distinguishes “the confirmation of resonator compatibility” from “merely verifying that the vehicle to be charged is authorized to receive charging” slip op. at 6

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

    “a. Bennett’s resonant frequency tuning The evidence of record indicates that it would have been obvious to implement Cook’s wireless charging system using Bennett’s resonant frequency tuning. Ex. 1003 ¶ 114; Pet. 21–22. Specifically, Cook teaches that its wireless charging system requires “the right frequency” to charge a vehicle’s battery. Ex. 1007 ¶ 12; Pet. 24. But Cook does not teach how to adjust the resonant frequency of its wireless charging system to work with different vehicles. Ex. 1003 ¶ 114; Pet. 24. As discussed above, Bennett teaches tuning the power transmitting unit’s resonant frequency to the target electronic device’s requested resonant frequency. Ex. 1005 ¶¶ 37–38, 57– 58, Fig. 3. A person of ordinary skill in the art would have recognized that Bennett’s resonant frequency tuning would improve Cook’s wireless charger by making it compatible with different vehicles. Ex. 1003 ¶ 114; Pet. 24– 25. In addition, a person of ordinary skill in the art would have reasonably expected the combination to work because Bennett explains that its techniques apply generally to battery-powered devices. Ex. 1003 ¶ 121; Ex. 1005 ¶ 3; Pet. 28–29.” slip op. at 20

  • Strike new argumentNew argument consideredDecided for petitioner

    “in the Reply is an improper new argument. PO Sur-reply 15. We disagree. The Petition expressly relies on Bennett’s resonant frequency tuning as teaching the compatibility limitation. Pet. 49–50 (citing Ex. 1005 ¶¶ 37–38, 41). Patent Owner responds by arguing that Bennett’s resonant frequency tuning is an optional step that occurs after initiating power transfer. PO Resp. 23–24. In the Reply, Petitioner responds by pointing to Bennett’s Figure 3 as evidence that the resonant frequency tuning occurs before initiating power transfer. Pet. Reply 18–21 (citing Ex. 1005 ¶¶ 37, 57, Fig. 3; Ex. 1036 ¶¶ 28–29). Petitioner’s argument in the Reply properly relies on the same feature (i.e., Bennett’s resonant frequency tuning) and the same embodiment (i.e., the system shown in Figures 1 and 3) as the Petition. Ex. 1005 ¶¶ 29, 37–38, 57 (“FIG. 3 is a flowchart illustrating resonant power transfer operations performed using the power system of FIG. 1 . . . .”). Thus, Petitioner’s reliance on Bennett’s Figure 3 is a proper response to arguments in Patent Owner’s Response, not an improper new theory of unpatentability. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) ([T]he arguments and evidence in the reply must not be part of a new theory of unpatentability” and “must be responsive to the patent owner’s contentions or the Board’s institution decision.”).” slip op. at 16

  Patent outcomesUS 8,912,687 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,912,687
• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision

  Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8

  Patent outcomesUS 8,461,719 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,461,719
• Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentable
  PTAB · Feb 10, 2025 · IPR2023-01213 · APJ Brian D Range · IPR · Final written decision

  Claims 1, 2, 10, 12, 13, 21, and 22 are unpatentable as obvious over Crane and Spain; claim 11 is dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 9

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

    “after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Pet. 15–18. Petitioner’s proposed constructions are consistent with the claim construction decision from related litigation or the parties’ prior stipulations regarding claim construction. Id.; Ex. 1023 (parties’ stipulation); Ex. 1027 (parties’ stipulation); Ex. 1028, pp. 24–32 (District Court order). Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. passim. We note that, the District Court held, in a non-final order, that claims 1 and 12 were indefinite because of the term “in proximity.” Ex. 1028, 24– 28. The District Court, however, did not issue a final ruling with respect to claims 1 and 12 because the parties narrowed the dispute concerning the ’784 Patent to only claim 11. Ex. 2018, ¶ 3. We also note that we do not need to assess whether or not the term “in proximity” renders claims 1 and 12 indefinite to assess the Petition. Rather, we agree with Petitioner that the “in proximity” language is at least broad enough to “encompass” the matter set forth in Petitioner’s claim construction. See Pet. 17, 37–41. This is sufficient definition to make it logically possible to reach the merits of Petitioner’s challenge. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (holding that indefiniteness only precludes a patentability determination 102 or 103 if the indefiniteness makes it “logically impossible” to reach such a decision).” slip op. at 11

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

    “Petitioner argues that it would have been obvious to implement Spain’s location determination system as part of Crane’s system and that such an implementation would have a reasonable expectation of success. Pet. 26 (citing Ex. 1008 ¶¶ 111–112). Patent Owner does not dispute Petitioner’s contentions regarding this recitation. Based on the entire trial record, we agree with Petitioner’s analysis and credit Mr. William’s testimony supporting Petitioner’s position. Thus, in view of the evidence of record, we find that Crane and Spain disclose the preamble of recitation 1.1.” slip op. at 20

  Patent outcomesUS 9,097,784 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,097,784
• Lenovo (United States) Inc. v. Intellectual Ventures I LLCInstitution denied
  PTAB · Feb 6, 2025 · IPR2024-01224 · APJ Larry J Hume · IPR · Institution

  The Board denied institution because Petitioner did not show Dammann was prior art, defeating both obviousness grounds against claims 1-3, 7-11, 13-16, and 18.

  RulingsInstitution decision

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

    “institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4 (2024). Having reviewed the parties’ papers and the evidence of record, and applying those standards, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Therefore, we decline to institute an inter partes review of any of challenged claims 1–3, 7–11, 13–16, and 18 of the ’439 patent, based on the grounds raised in the Petition.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by the testimony of Dr. Ding, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in electrical engineering, computer engineering, or the equivalent, from an accredited program, and two or more years of experience with wireless communications networks.” Pet. 21 (citing Ex. 1003 ¶ 38). Petitioner contends that “[m]ore practical experience could qualify one not having the aforementioned education as a [person of ordinary skill in the art (POSITA)], while a higher level of education could offset lesser experience.” Id. See generally Prelim. Resp. We note that the open-ended “or more” language set forth by Petitioner expands the range of experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Based on the record before us, and as modified above, we adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition, apart from the “or more” language, generally comports with the level of ordinary skill as reflected by the ‘439 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Ding. See Ex. 1003 ¶ 38.” slip op. at 14

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

    “cyclically advancing the first OFDM packet by shifting the samples in a first direction” in claims 1 and 8. Pet. 22. According to Petitioner, “[d]uring the Underlying Litigation, Petitioner explained that this term should be construed to mean ‘cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.’ Patent Owner argued that the correct construction is plain and ordinary meaning.” Id. Petitioner contends “[t]he construction Petitioner presented during the Underlying Litigation is correct, because that construction is the plain and ordinary meaning,” but “the scope of the claims includes the prior art under any reasonable construction” so “the Board does not need to construe any claim term for purposes of evaluating whether the claims cover the prior art addressed in this Petition.” Id. Patent Owner takes no position on the meaning of any claim terms; however, Patent Owner indicates that the district court construed “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission” (i.e., Petitioner’s proposed construction). Prelim. Resp. 22 n.2 (citing Ex. 2005, 8; Ex. 2006, 25–26). We do not find it necessary to address the construction of any claim terms or phrases to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “As our reviewing court has held, “public accessibility” requires more than technical accessibility. Acceleration Bay, 908 F.3d at 773. “A reference is considered publicly accessible if it was ‘disseminated or skilled in the subject matter or art, exercising reasonable diligence, can locate it.’” Id. at 772. Because there is no evidence of record that Dammann was actually physically disseminated to the public, such as at the conference site, our inquiry is focused on whether an interested skilled artisan, using reasonable diligence, would have found Dammann on the “docenti.ing.unipi.it” website.” slip op. at 25

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,623,439
• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. Intellectual Ventures I, LLCInstitution denied
  PTAB · Jan 28, 2025 · IPR2024-01244 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–21 obvious over either asserted prior-art combination.

  RulingsInstitution decision

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

    “Petitioner’s reasoning is misplaced and unpersuasive. Per limitation 1[b][ii], which modifies limitation 1[b][i], it is the cyclic advance in limitation 1[b][i] that must be “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” Ex. 1001, 9:37–41. Petitioner has shown the amount of the 1-sample delay in Larsson’s Figure 8 is “an amount less than a sample duration of the guard interval portion to generate a shifted version of the first OFDM packet for transmission.” But that is not what is required by the claim. Petitioner has not shown the amount of the cyclic advance relied upon by Petitioner to satisfy the cyclic advance requirement of limitation 1[b][i] meets the duration requirement of limitation 1[b][ii].” slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “POSITA”) “would have at least a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, with at least two or more years of experience in the field of wireless communication systems and protocols, with more education substituting for work experience and vice versa.” Pet. 7 (citing Ex. 1003 ¶ 31). Patent Owner does not make any averment with respect to the level of ordinary skill in the art and also does not dispute Petitioner’s assertion regarding the level of ordinary skill in the art. See generally Prelim. Resp. slip op. at 16

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

    “A court in W.D. Tex. construed the term “cyclically advancing the first OFDM packet by shifting the samples in a first direction” as “cyclically advancing the first OFDM packet by shifting the samples in the direction of transmission.” See EX1009 at 8. Although that construction was adopted in a different case, Petitioners and Patent Owner agreed in their Joint Claim Construction Statement in the parallel litigation (the “Texas Litigation” as defined below) that this construction is appropriate. See EX1010.” slip op. at 19

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “We agree with Petitioner that limitations 19[a], 19[b], 19[c], and 19[d] are means-plus-function elements under 35 U.S.C. § 112, sixth paragraph, and we have no reason to disagree with Petitioner’s identification of corresponding structure in the ’439 patent’s specification. We adopt Petitioner’s statement of construction for these means-plus-function elements. D.” slip op. at 22

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,623,439

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.