- PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §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
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. 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
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,764,803 - PTAB · Dec 4, 2025 · IPR2025-01103 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR on claims 7–12 on all grounds, finding a reasonable likelihood that Lamkin and the asserted combinations render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim in the ’101 patent. Accordingly, we institute an inter partes review of claims 7–12 of the ’101 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”), various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey- not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. For purposes of this Decision, we adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the description in the ’101 patent, the prior art of record, and the testimony of Dr. Zadok.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Petitioner contends that no claim terms need construction, but also contends that “claim interpretations on which this Petition depends are incorporated in and apparent from the prior art mapping analysis below.” Pet. 5. Patent Owner contends that Petitioner’s position contradicts the position Petitioner took in related district court litigation, particularly Petitioner’s district court constructions of means-plus-function limitations” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Fiechter (Ground 1B) in the manner claimed in the ’101 patent with a reasonable expectation of success, which we find sufficient to satisfy the reasonable likelihood standard on the present record. Pet. 42–45 (citing Ex. 1003 ¶¶ 360–362, 372–382). The Petition also offers several motivations to combine Lamkin and Ito (Ground 1C) in the manner claimed in the ’101 patent with a reasonable expectation of success, which we also find sufficient on the present record. Pet. 49–52 (citing Ex. 1003 ¶¶ 383–401). The Preliminary Response does not challenge the Petition’s asserted motivations to combine Lamkin-Fiechter or Lamkin-Ito. Prelim. Resp. generally. On the present record at this stage of the proceeding, we determine the Petition sufficiently supports a motivation to combine Lamkin-Fiechter and Lamkin-Ito with a reasonable expectation of success for the reasons articulated in the Petition and Dr. Zadok’s cited declaration paragraphs.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,230,101 - Apple Inc. v. Proxense, LLCInstitutedPTAB · Oct 2, 2025 · IPR2025-00562 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–20 on all three § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Prior constructionPrior construction not adoptedDecided for petitioner
“Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1, and “enablement signal enabling one or more of an application, a function and a service.” Prelim. Resp. 1–6. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2001, 25–26)) to support its contention that the District Court construed the term “enabled,” as we determined in the prior proceedings, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2001, 26; see also IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11. That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Ex. 2001, 26. Accordingly, although the referenced portion of the District Court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Prelim. Resp. 5. That is, we are unpersuaded that the District Court construed that “‘[a]n application, function, or service is ‘enabled’ by a PDK when it receives information from a PDK in exchange for an access key” or that “hybrid device” includes “an RDC that ‘enable[es] one or more of an application, a function, and a service’ when it forwards such a message to the application, function, or service.” Id. (emphasis omitted, alteration in original). Thus, as in the prior proceedings, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key or forwarding a message to the application, function, or service.” Id.; see also IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner proposes claim construction for “Personal Digital Key (PDK).” Pet. 8–9. Patent Owner does not take issue with Petitioner’s proposed construction for “PDK” but instead requests that we “follow the District Court’s construction” for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1, and “enablement signal enabling one or more of an application, a function and a service,” with respect to claim 10. Prelim. Resp. 1–2. Because the parties do not take issue with each other’s proposed claim constructions, there is no term of the challenged claims that is in controversy, and thus, we determine that no term requires explicit construction. See Realtime, 912 F.3d at 1375. However, although it is not necessary to construe the term to resolve the disputed issues before us, we note that Patent Owner provides arguments with respect to “enabling one or more of an application, a function, and a service” recited in claims 1 and 10. Prelim. Resp. 1–2. We addressed similar arguments with respect to these terms in previous proceedings with related patents (see IPR2024-00405, Paper 8 at 11–12; IPR2024-00407, Paper 8 at 12–13; IPR2024-00784, Paper 12 at 10–11), and we similarly address Patent Owner’s contention in this proceeding.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“have been motivated to integrate an RDC into Giobbi ’157’s hybrid device for communication with external PDKs based, in part on the teachings of Giobbi ’139.” Pet. 27. In particular, Petitioner contends that Giobbi ’139 “expressly teaches integrating an RDC into the same type of hybrid device disclosed in Giobbi ’157, a cell phone,” wherein “a ‘Personal Digital Key Digital Content Security System (PDK-DCSS) is used to protect computers from unauthorized use and protect the digital content stored on computers from being wrongfully accessed, copied, and/or distributed.’” Id. at 28 (citing Ex. 1005, Abstract). According to Petitioner, “Giobbi ’139 teaches that RDCs should be incorporated into hybrid devices like cell phones because these devices ‘commonly included’ data storage,” wherein “Giobbi ’139 identified such a configuration as an ‘enhancement.” Pet. 29 (citing Ex. 1005 ¶¶ 87–88). Further, according to Petitioner, “Giobbi ’157 teaches that it is advantageous to incorporate PDKs into ‘commonly carried items,’ like phone, since it would eliminate the need for a user to carry a separate PDK device and would reduce the risk of loss.” Id. at 30 (citing Ex. 1005 ¶ 35; Ex. 1003 ¶ 48). In addition, Petitioner contends that “the Dua patent’s RFID system configuration also provides motivation to integrate and RDC into Giobbi ’157’s hybrid device.” Id. In particular, according to Petitioner, “Dua teaches a hybrid device—e.g., a cell phone—which establishes wireless connections with other devices to enable functions and exchange data.” Id. (citing Ex. 1006, 6:46–65).” slip op. at 18
Claim construction§ 103 obviousnessPatents in suitUS 9,049,188 - 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 · GrahamPatents in suitUS 7,089,443 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Jan 27, 2025 · IPR2024-01130 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 5–9 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). On the preliminary record before us, we determine that Petitioner has satisfied this threshold requirement, and therefore we institute inter partes review of claims 5–9 of the ’842 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“impact the Board’s exercise of discretion, including the merits.” Fintiv, Paper 11, 6. “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily denied institution under Fintiv.” Memorandum, 4–5. On the other hand, “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential). Here, factors 1–5 are either neutral or weigh at least slightly against discretionary denial of institution. Thus, on balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution, and we need not decide whether Petitioner presents a compelling unpatentability challenge. 1. Conclusion Based on our review of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately one or more years of professional experience with electronic and optoelectronic system design,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 3 (citing Ex. 1002 ¶¶ 45–46). Patent Owner does not offer an alternative definition. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art (without adopting, however, Petitioner’s open-ended “or more” language).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties have submitted proposed claim constructions. Pet. 4–7; Prelim. Resp. 6. At this stage of the proceeding, however, we do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,168,842 - PTAB · Jan 27, 2025 · IPR2024-01132 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–7 and all asserted grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Paper 1 (“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1–7 (the “challenged claims”) of U.S. Patent No. 7,586,121 B2 (“the ’121 patent”). 35 U.S.C. § 311. Optronic Sciences LLC (“Patent Owner”) filed a Preliminary Response, Paper 7 (“Prelim. Resp.”), contending that it “does not believe the Petition merits institution.” Prelim. Resp. 1. The Patent Owner Preliminary Response does not include any substantive analysis of Petitioner’s challenges. Id. We have jurisdiction under 35 U.S.C. § 6. 35 U.S.C. § 314 provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl. ¶ 23). Patent Owner does not comment on the level of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party has proposed a special definition or explicit construction of any claim term. Pet. 5–6, Prelim. Resp. 1. As we do not perceive a need to construe any term, we apply the plain and ordinary meaning to the claim language.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation Anticipation is a question of fact, as is the question of what a prior art reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,586,121 - PTAB · Jan 27, 2025 · IPR2024-01134 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–5 based on reasonable-likelihood showings for anticipation over Hekmatshoar and obviousness over the listed combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–5 of the ’733 patent to determine whether: 1) claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Hekmatshoar; 2) claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over Hekmatshoar and Gupta or Han; and 3) claims 1–5 are unpatentable under 35 U.S.C. § 103 as obvious over Lee ’149 and Hekmatshoar or Weaver. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 28
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The plain language in claim 1 of “auxiliary electrode” does not suggest a requirement that the “electrode” precludes “wires and/or bus lines,” as Patent Owner proposes. Prelim. Resp. 1; see Ex. 1001, 8:55–58. Further, nothing in the Specification clearly limits “auxiliary electrode” to preclude a wire or a bus line. Here, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue such that an “electrode” cannot be a wire or a bus line. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984). Although the Specification discusses various examples wherein an auxiliary electrode may be implemented, Patent Owner points to no special definition, implicit or explicit, for “auxiliary electrode” that is set forth in the Specification which supports Patent Owner’s construction with reasonable clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480. In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 does not preclude a wire or a bus line. We determine no further explicit construction is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Hekmatshoar’s Interconnect is “an electrode . . . supplemental to other electrodes in the structure” that is “electrically insulated from driver TFT” and disposed at “the right side” of “the light emitting device (OLED that includes layers ITO-anode, organic, cathode).” Pet. 19–22; Ex. 1003 ¶¶ 91–95. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’733 patent’s auxiliary electrode 460, Hekmatshoar’s Interconnect is electrically insulated from an active device and disposed at a side of a light emitting device. Id.; see also id. at 2 (annotated Figure 6 of the ’733 patent). We also find availing Petitioner’s contention that Hekmatshoar’s Interconnect is electrically connected with “the first electrode layer (ITO-anode [red]) of the light emitting device (OLED).” Id. at 19. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Hekmatshoar describes “an auxiliary electrode electrically insulated from the active device and disposed at a side of the light emitting device, wherein the auxiliary electrode is electrically connected with the first electrode layer of the light emitting device.” iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been anticipated by Hekmatshoar.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“iv. Conclusion On the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that claim 1 would have been obvious over Lee ’149 and Hekmatshoar or Weaver. Furthermore, on this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Lee ’149 and Hekmatshoar or Weaver. v. Claims 2–5 Petitioner provides detailed explanations as to how Lee ’149 in combination with Hekmatshoar or Weaver renders obvious claims 2–5, depending from claim 1, citing Dr. Baker’s testimony for support. Pet. 39–53 (citing Ex. 1005 ¶¶ 24, 26–27, 30, 38, Fig. 1; Ex. 1003 ¶¶ 141–153, 155–166). Having reviewed Petitioner’s arguments and supporting evidence in the present record, we determine Petitioner has demonstrated a reasonable likelihood that it will prevail on its assertion that the subject matter of claims 2–5 would have been obvious over Lee ’149 and Hekmatshoar or Weaver.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,406,733 - PTAB · Jan 27, 2025 · IPR2024-01133 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that Weaver anticipates certain claims and the asserted Weaver combinations render the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution: factors 1, 4, and 5 are neutral and factors 2 and 3 weigh at least slightly against exercising discretion to deny institution. As a result, for this factor 6, we need not decide whether Petitioner presents a compelling unpatentability challenge on the merits. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Conclusion on Discretionary Denial Under § 314(a) As noted in Fintiv, we consider the above six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that, weighing these factors in a holistic analysis, the circumstances here favoring institution outweigh the overlapping of issues in the district court litigation. Therefore, we are not persuaded that the interests of efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution of this Petition.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a) (2024). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. V. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–13 of the ’509 patent to determine whether: 1) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 102 as anticipated by Weaver; 2) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’053; 3) claim 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Song; 4) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Lee ’149; 5) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Bae; 6) claims 1–5, 9, 12, and 13 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver and Gupta or Han; 7) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’053, and Gupta or Han; 8) claims 6–8 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Song, and Gupta or Han; 9) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Lee ’149, and Gupta or Han; and 10) claims 10 and 11 are unpatentable under 35 U.S.C. § 103 as obvious over Weaver, Bae, and Gupta or Han. FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In view of the plain language of the claims and the Specification, we determine that the term “auxiliary electrode” recited in claim 1 is neither limited to an anode or cathode, nor precludes “a power line, bus line, or resistor” or any electrode that “provides a sole, critical electrical connection to a load.” We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find Patent Owner’s arguments unavailing. In particular, we find unavailing Patent Owner’s contention that “‘bus line 430’ is not an ‘electrode’” (Prelim. Resp. 4), because Patent Owner is relying on a claim construction of “electrode,” requiring “an anode” or “cathode” and excluding a “bus line” (id. at 16), that is not adopted by our construction discussed above. Thus, we are unpersuaded by Patent Owner’s contention that Weaver fails to disclose the “auxiliary electrode” limitation because “Weaver never refers to its ‘bus line 430’ as an anode, cathode, or electrode.” Id. Although Patent Owner contends that “bus line 430 is not ‘auxiliary’ or ‘supplemental’ to anything” (Prelim. Resp. 4), we are persuaded by Petitioner’s reliance on Weaver’s bus line 430 for providing the claimed “electrode,” that is “supplemental to other electrodes in the structure.” Pet. 18; see also Ex. 1004 ¶ 26, Fig. 4; Ex. 1003 ¶ 92. We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that a POSITA would have understood that “anode 406 and bus line 430 are connected in parallel,” which means that “bus line 430 is a supplemental electrode that reduces the total resistance of the pixel structure.” Pet. 19; Ex. 1003 ¶ 94. Thus, we find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Weaver’s bus line 430 is an electrode supplemental to other electrodes in the structure that is electrically insulated from transistor 410 by passivation layer 409, wherein OLED 400, which includes cathode 422, organic layer 424, and anode 406, is disposed above bus line 430, and wherein anode 406 of OLED 400 is electrically connected to bus line 430 by via 428. Pet. 16–19; Ex. 1003 ¶¶ 89–94. That is, we find availing Petitioner’s contention, which Patent Owner does not contest, that, like the ’509 patent’s auxiliary electrode 120, bus line 430 is electrically insulated from transistor 410, wherein OLED 400 is disposed above bus line 430 and anode 406 electrically connected with bus line 430. Id.; also compare Pet. 2–3 (annotated Figure 2 of the ’509 patent) with id. at 16, 20 (annotated Figure 4 of Weaver). On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that Weaver teaches “a first auxiliary electrode electrically insulated from the active device,” and “a light emitting device disposed above the first auxiliary electrode,” wherein “the light emitting device comprises a first electrode layer electrically connected with the first auxiliary electrode.”” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,263,509
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.