- Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.No claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01198 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 10–20 were not shown unpatentable because Petitioner did not establish the claimed metal impurities or a reason to combine Istratov’s gettering process with the cited solar-cell references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“These disclosures, taken together, indicate that “metal impurities” are undesirable, and, accordingly, the term “metal impurities” is not meant to include intentionally added dopants. The undesirability of “metal impurities” is also demonstrated by the Specification’s instruction that “contaminants and/or impurities” are used interchangeably throughout. Ex. 1001, 5:8–9. In that regard, “iron, nickel, and/or chromium, among others” are the only exemplary metal impurities and/or metal contaminants identified in the Specification. Id. at 4:65–5:1 (“In an embodiment, the silicon substrate 202 can have contaminants and/or impurities 220, for example metal contaminants and/or metal impurities, such as iron, nickel and/or chromium, among others); 5:35–39 (“In an embodiment, the heating can include gettering contaminants, e.g., metal impurities and/or metal contaminants, from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel, and/or contaminants 520, e.g. metal impurities and/or contaminants, can be located in the second emitter region 512 . . . the metal impurities 520 can be iron, nickel and/or chromium, among others.”). And metal impurities and metal contaminants are both described as gettering from the silicon substrate to the emitter region. See id. at 5:5–9 (“A gettering process can be used to trap the metal impurities 220 in the emitter regions 212, reducing recombination within the silicon substrate 202 and improving overall cell lifetime.”); 5:35– 40 (“In an embodiment, the heating can include gettering contaminants, e.g. metal impurities and/or metal contaminant[s], from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel and/or chromium among others.”); 6:5–8 (“In an embodiment, the heating can getter 232 contaminants 220 from, or nearby, the surface 204 of the silicon substrate 202 and/or from within the silicon substrate 202 to the emitter region 212.”) Accordingly, the Specification conveys that “metal impurities” are metal contaminants that are detrimental to the electrical conduction of solar cells.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner fails to sufficiently demonstrate by a preponderance of the evidence that a POSITA would have been motivated to look to Istratov’s gettering process to improve Choi’s solar cell. Although Petitioner argues that a POSITA would have been motivated to look to Istratov’s gettering process upon identifying detrimental levels of metal impurities in Choi’s substrate, neither Petitioner nor Dr. Holman levels of metal impurities in Choi’s substrate, what level of metal impurities would be “detrimental,” or what detriment the metal impurities would cause. In that regard, Petitioner does not direct us to, nor do we discern, any teachings in Choi regarding the presence of metal impurities in the silicon substrate, let alone iron and/or copper impurities such as those described in Istratov.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“We agree with Petitioner. As the Board indicated in Chicago Mercantile Exchange, whether a document qualifies as a printed publication requires a legal determination based upon evidence and “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude.” Chicago Mercantile Exchange, Paper 35 at 52. Although addressing the admissibility of evidence (authenticity or hearsay) underlying the factual determinations of whether Exhibits 1018, 1034, and 1120 may be the subject of a motion to exclude, Patent Owner’s arguments in the Motion address whether there is sufficient evidence to establish that these exhibits are prior art, not the general admissibility of the documents. See Mot. 3–6; Chicago Mercantile Exchange, Paper 35 at 52. be excluded. These exhibits, for the most part, are offered to support Dr. Holman’s testimony regarding the background of the technology (Ex. 1003 ¶¶ 42, 43, 45–52, 56, 57 (citing Ex. 1018), 55, 67 (citing Ex. 1034)) or what the ordinarily skilled artisan would have understood (Pet. Reply 11 (citing Ex. 1120); Ex. 1089 ¶¶ 46–48, 56, 59, 60, 69 (citing Ex. 1120)). Furthermore, Exhibit 1018 was authored by Dr. Holman, and is identified in the curriculum vitae appended to Dr. Holman’s declaration in support of the Petition. Ex. 1003, 224 (App’x. A). Accordingly, we deny Patent Owner’s motion to exclude” slip op. at 32
Patent outcomesUS 11,251,315 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,251,315 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.Some claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable as obvious; claim 12 was not shown unpatentable because the evidence did not establish that Froitzheim’s silver contact was formed over silicon dioxide.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had (i) an advanced degree in electrical engineering, mechanical engineering, applied physics, chemistry, materials science, or a related discipline and (ii) at least one year of experience 7 Neither Petitioner nor Patent Owner raises issues of objective indicia of nonobviousness. designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Alternatively, a POSITA [i.e., a person of ordinary skill in the art] would have had (i) a bachelor’s degree in the aforementioned disciplines and (ii) at least two years of experience designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Less work experience may be compensated by a higher level of education, and vice versa.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded that Petitioner has shown a reasonable expectation of success in the combination of Froitzheim and Gan. Petitioner explains that the combination of Froitzheim and Gan simply replaces one emitter, i.e., Froitzheim’s diffused emitter, with the polysilicon emitter of Gan. Pet. 36. According to Petitioner, a person of ordinary skill in the art would have also readily understood how to replace a diffused emitter with a polysilicon emitter and oxide layer [and] would have understood that instead of diffusing boron into the substrate’s back side as taught by Froitzheim, a [person of ordinary skill in the art] would instead follow the manufacturing technique taught by Gan. Pet. 37 (citing Ex. 1005, 246). Petitioner explains that the Gan processes are well-known and routine, and Dr. Holman states that “modifying Froitzheim in view of Gan simply involves using Gan’s known technique of a polysilicon emitter and oxide layer with Froitzheim’s known solar cell to improve Froitzheim’s solar cell in a similar way.” Pet. 37 (citing Ex. 1003 ¶ 144). For example, Petitioner directs our attention to “multiple instances” in which oxide layers and polysilicon emitters have been implemented successfully in the art. Pet. 37 (citing Ex. 1005, 246; Ex. 1006 ¶ 22; Ex. 1046, Abstr., 1121; Ex. 1003 ¶ 145). Furthermore, Gan’s statement that “cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter” and “polysilicon emitters with low J0 and ρc can be obtained with a very small fraction of interfacial oxide breakup” indicate a reasonable expectation of success. Ex. 1005, 245, 249. Gan also states that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells.” Ex. 1005, 249. Thus, we are persuaded that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Froitzheim and Gan.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded the record evidence rises to the level of a teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And “teaching away” requires more than the mere expression of a general preference.” Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. See Ex. 1008, 4 (Li describing “conventional” diffusion processes at temperatures of 800–1000° C). Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 51
Patent outcomesUS 8,222,516 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.All claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01199 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over the grounds combining Froitzheim, Gan, and Smith, or Li, Gan, and Smith.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner also states that the Patent Owner “applies the level of ordinary skill in the art Petitioner proposed.” PO Resp. 24. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’053 patent and the prior art of record, we determine that the definition offered by Petitioner and applied by Patent Owner comports with the qualifications a person would have needed to understand the ’053 patent and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “[t]he claims should be given their plain and ordinary meaning to resolve the issues in this proceeding.” Pet. 17 (citing Ex. 1003 ¶¶ 102–105). Patent Owner states that its Patent Owner Response “adopts petitioner’s proposal to apply the plain and ordinary meaning of the claims.” PO Resp. 24. Accordingly, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need 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) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And, “teaching away” requires more than the mere expression of a general preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 44
Patent outcomesUS 8,878,053 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - Thermaltake Technology Co., Ltd. / Thermaltake Inc. v. Chien-Hao ChenAll claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01230 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–5 are unpatentable; substitute claims 6 and 7 are unpatentable, and the Revised Motion to Amend is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“our Institution Decision comports with the qualifications a person would have needed to understand and implement the teachings of the ’336 patent and the prior art of record. Inst. Dec. 15. Accordingly, we adopt the level of skill discussed in our Institution Decision. C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Pharms. Inc. v. Amino Chemicals Ltd., 715 F.3d 1363, 1374 (Fed. Cir. 2013)). Accordingly, Patent Owner applies a different definition of “side,” in claim 1’s recitation of “an illumination area on at least two sides of the fan at top of the body,” to that definition used to understand “side[s] of the body,” discussed above. Specifically, Patent Owner argues that Petitioner’s dictionary definition of “side,” including “an area next to something” applies to “an illumination area on at least two sides of the fan at the top of the body.” See id. at 8–9.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Hasegawa, and Huang teaches or suggests the limitations of claim 3, and that one skilled in the art would have been motivated to combine those teachings with a reasonable expectation of success. See Ex. 1004 ¶¶ 136– 140; Ex. 1008, 8:4–15, 3:20–29. Accordingly, we determine that claim 3 would have been obvious over Lai and Huang, or Lai, Hasegawa, and Huang. F.” slip op. at 50
- 112 supportMotion to amend, deniedDenied
“c) Conclusion We conclude that Patent Owner's Revised Motion to Amend adds new” slip op. at 90
Patent outcomesUS 10,690,336 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,690,336 - Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision
Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31
Patent outcomesUS 7,314,167 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,314,167 - PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - Google LLC v. DH International Ltd.All claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01322 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Mooney; the Board also found Mooney combined with Lee renders the disputed limitations obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’294 patent would have had at least a bachelor’s degree in electrical engineering, or a related field, and at least two years of experience in design, development, and/or testing of network-enabled consumer devices, and familiarity with payment cards, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Lipoff Decl. Ex. 1003 ¶ 57). “Patent Owner agrees with the Petitioner on the level of ordinary skill in the art.” Resp. 4. Patent Owner adds that a POSITA would have had “at least three years of relevant industry or research experience in wireless communication between devices.” Id. (citing Ex. 2001 ¶¶ 26–29). Mr. Zaheer testifies that a POSITA “would” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language and specification define and describe an “activation cue” in functional terms: a data communication from an external source is received by the cell phone and recognized as an activation cue if it causes the switching element to be assigned its first (activated) state. Ex. 1001, 9:28–31, 9:42–46, 10:14–16, 13:55–60, 14:53–59, 15:4–6, 19:20–26. Patent Owner agrees that “upon an activation cue being received by portable electronic device 10, switching element 44b switches to its activated state.” Resp. 19 (quoting Ex. 1001, 10:14–16). The activation cue may be a predetermined bit sequence, a predetermined contactless data transmission, continuously emitted, pulsed, or punctual, but these are unclaimed non-limiting embodiments of the preferred form of data transmission. Id. at 9:25–26 (“for example a predetermined bit sequence”), 11:20–22 (“One example . . . emit an activation cue in the form of a predetermined contactless data transmission”), 14:65–15:3 (continuously emitted, pulsed or punctual cue). We will not read such preferred embodiments from the specification into claim language that is not so limited. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (care should be taken “not to import into a claim limitations that are not part of the claim”); see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”); see also IQRIS Techns. LLC v. Point Blank Enterprises, Inc., 2025 WL 727717, *4 (Fed. Cir. 2025) (“It is the claims, not the preferred embodiments, that” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“operatively linked to said electronic circuit” under 35 U.S.C. Section 112, sixth paragraph or not, the result is the same. We note there is no presumption of applying means-plus-function analysis to the switching element, because the limitation does not use the words “means for” that would mandate such claim construction treatment, and “switching” may invoke structure as well as function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349–1350 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). Regardless, we look to the meaning of the claim phrase at issue in view of the specification. We determine that the ’294 patent provides a clear, concise meaning for the switching element upon which both parties rely for construction. Patent Owner’s express agreement with Petitioner, that the claimed switching element is described in the ’294 patent as “any type of device allowing data to be conveyed according to alternate data conveyance operations in response to an activation cue being received by transceiver 18 or not,’” is particularly telling because it is not consistent with Patent Owner’s argument that the switching element means “switching of the data.” Resp. 7, 31 (citing Ex. 1001, 9:28–318). The claim language does not recite, and the specification does not describe, the switching element as a device that switches the data. Therefore, we determine the claimed “data conveyance switching element” means any type of switching device that allows data to be 8 We presume Patent Owner’s citation to “Exh. 2001, 9:28-31” on page 7 was intended to be a citation to the ’294 patent (Ex. 1001), as cited on page 31. whether or not an “activation cue” is received by the cell phone “cue receiver.”” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“[external] data exchange device” as a device with a data transceiver coupled to a circuit that carries out the function of exchanging data. Pet. 7–8 (citing Ex. 1001, 2:14–17, 4:7–14, 9:3–6; Ex. 1003 ¶¶ 67–68). As above, whether we construe the “[external] data exchange device” under 35 U.S.C. Section 112, sixth paragraph or not, the result is the same. Patent Owner, quoting the description of a data exchange device in the ’294 patent, contends that a “[external] data exchange device” “can be any sort of data exchange device comprising an electronic circuit (not shown) therein and a data transceiver 9a.” Resp. 8 (quoting Ex. 1001, 9:4–6). Patent Owner also responds to the Petition by clarifying that “[a]n external data exchange device is not a transceiver but a device with a transceiver.” Id. (citing Ex. 2001 ¶ 48). Petitioner argues in reply that Patent Owner does not contest Petitioner’s mappings of Mooney’s “cordless telephone base unit” or “cellular network infrastructure” to the claimed data exchange devices, such that no construction is necessary to resolve the dispute. Reply 5 (citing Resp. 16–37; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Limitations [1.c] and [1.d] recite “a first [second] data transceiver operatively linked to said electronic circuit [in the cell phone],” both of which are defined functionally as “for exchanging data between said electronic circuit [in the cell phone] and a first [second] external data exchange device over a first [second] communication link.” Nothing in the the other independent claims, further limits the form or function of the “[external] data exchange device,” although a device external to the cell phone may invoke additional structure. We determine the plain meaning of “[external] data exchange device” as claimed and described in the ’294 patent governs: any [external] device that comprises an electronic circuit and data transceiver for exchanging data with the electronic circuit in the cell phone over a communication link. slip op. at 22
Patent outcomesUS 9,022,294 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - PTAB · Feb 9, 2026 · IPR2025-00933 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all three §103 grounds, finding a reasonable likelihood that Samsung would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–12 of the ’595 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends that [A] person of ordinary skill in the art (“POSITA”) would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent. Pet. 3 (citing Ex. 1003 ¶ 26). Petitioner further contends that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Id. Patent Owner objects to Petitioner’s proposed level of ordinary skill in the art only “[t]o the extent that Petitioner requires [] the required experience and/or education level to be acquired by December 24, 2015.” Prelim. Resp. 8. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, with the exception of the openended language “at least,” we adopt the assessment offered by Petitioner.11 11 No matter how designated in this decision, any determination (except our determination to institute trial) is preliminary and non-binding. We wish to have the full record as developed during trial before rendering any binding determination, finding, or conclusion. It is not materially disputed by the Patent Owner and is consistent with the ’595 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther
“[7.pre] A wireless communication method of a wireless communication terminal, the method comprising:13 Petitioner relies on Josiam “disclos[ing] ‘methods for efficient signaling and addressing in WLAN [wireless local area network] systems.’” Pet. 11 (citing Ex. 1003 ¶ 112; Ex. 1005 ¶ 4).14 The Petition states that “Josiam’s methods describe at least one station (i.e., a wireless communication terminal).” Id. 13 Petitioner does not address whether the preamble of claim 7 is limiting. See Pet. 1. We determine that the preamble of claim 7 is not limiting because it does not recite essential steps or structure and is not necessary to give life, meaning, and vitality to the claim. See Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, 962 F.3d 1362, 1367 (Fed. Cir. 2020). 14 Petitioner provides parallel citations to Exhibit 1006, the earliest provisional application to which Josiam claims priority (see Ex. 1005, code (60), in order to show that “the relevant subject matter relied upon herein is fully supported by respective provisional applications filed before the [filing date (December 24, 2015) of the earliest foreign application to which the ’595 patent claims priority (see Ex. 1001, code (30)].” Pet. 2. At least at this stage, there is no dispute between the parties as to whether Josiam or the ’595 patent are entitled to the claimed priority. See Prelim. Resp. 1 fn.1, 12 fn. 2. Therefore, unless deemed necessary to Petitioner’s showing, we do not include references to the Petition’s citations to Exhibit 1006 or discussion of Exhibit 1006 in our analysis. However, if Petitioner cites to Exhibit 1006 in a passage that we quote, we maintain these citations so that our quotation is accurate and complete.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of the disclosures of Chen and Wu and articulates reasons why a skilled artisan would be motivated to combine the relevant teachings of Chen and Wu. See Pet. 42–85. This challenge to the patentability of the claims of the ’595 patent (Ground 2 of the Petition) is detailed and supported by the cited evidence. With regard to this ground and the asserted combination of art, Patent Owner argues that “[s]imilar to Grounds 1A and 1B, Chen and Wu do not show that ‘the bandwidth field of HE-SIG-A is used to obtain information of the unassigned resource unit’ as both the bandwidth field in HE-SIG-A and a subfield in HESIG-B need to be used for explicitly indicating the unassigned resource unit.” Prelim. Resp. 15. The quoted passage is limitation 7.5 and the “explicitly indicat[ing]” element is in limitation 7.7.16 See Ex. 1001, 54:3–4, 54:9–12; see also Pet. vii (showing claim 7 with limitations numbered and labeled). Thus, Patent Owner disputes the same limitations with a similar argument as for the earlier grounds in disputing the showing in the Petition for this ground. With regard to the disputed limitations, the Petition provides that, from a combination of the teachings and suggestions of Chen and Wu, a skilled artisan would understand that “the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels.” Pet. 60 (citing Ex. 1003 ¶ 178). The Declaration of Dr. Buehrer provides: 16 Limitation 7.7 recites: “the unassigned resource unit is explicitly indicated with the information of the unassigned resource unit based on the bandwidth field and the at least one subfield.” Ex. 1001, 54:9–12; Pet. vii (emphasis added). 178. Chen-Wu renders obvious using the bandwidth field of HE-SIG-A to obtain the information of the unassigned resource unit. As one example, a POSITA would have understood the Chen-Wu combination as rendering obvious that RU non-allocation information in HE-SIG-B indicates the location of a non-allocated RU within a 20MHz channel, while the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels. SAMSUNG-1008, [0101], [0098]; SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. 179. Chen teaches that “RU allocation may be determined based at least in part on the PAID, channel bandwidth, and the HE-SIG-B.” SAMSUNG-1008, [0101], [0098]. I note that the Applicant did not dispute the Examiner’s finding that Chen teaches this limitation. See SAMSUNG- 1002, 68, 102 (citing SAMSUNG-1008, [0093], [0098], [0103], Fig. 14). 180. Moreover, Wu teaches “a fixed format common field in the HE-SIGB is defined for each operation bandwidth. Therefore, the length and format of the common field are predefined [based on the bandwidth]. In this approach, there is no [additional] indication needed in the HE-SIG-A.” SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. As I explained above for [7.2] and [7.4], a POSITA would have understood Chen’s HE-SIG-A as including a bandwidth field that indicates the operation bandwidth of the PPDU. See [7.2], [7.4]. 181. For example, if the bandwidth field of HE-SIG-A indicates a PPDU bandwidth of 80 MHz, and the resource unit allocation field of the common field of HE-SIG-B indicates that the 20 MHz corresponding to the fourth channel is partitioned into 106, 26, and 106-tone resource units, the resource unit non-allocation information may indicate that the 26-tone resource unit is not assigned to any user through, e.g., a bitmap per Chen. SAMSUNG-1008, [0075], [0089]-[0093], Figs. 4, 12- 14; SAMSUNG-1009, [0035]-[0043], Figs. 2-4; SAMSUNG- 1010, 2-6, 10-14. Ex. 1003 ¶¶ 178–181 (alterations in original) (footnote omitted). We determine that this testimony of Dr. Buehrer is supported and reasonable and sufficiently persuasive and credible to support institution. We also note that Patent Owner does not, at least at this stage, provide any contradictory expert testimony.17 We have considered Patent Owner’s arguments relating to the disputed limitations and this ground and found them not to be as well-supported as the Petitioner’s showing for essentially the same reasons as discussed above with regard to Ground 1A. Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to the unpatentability of claims 1–12 of the ’595 patent based on a combination of the teachings and suggestions of Chen and Wu.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,470,595 - PTAB · Feb 6, 2026 · IPR2025-00988 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–14 and all petition grounds; it found a reasonable likelihood of success on the Josiam-based grounds, while the Bharadwaj grounds lacked established prior-art status.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–14 of the ’281 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, we adopt the assessment offered by Petitioner.11 It is not materially disputed by the Patent Owner and is consistent with the ’281 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts “that no formal claim constructions are necessary.” Pet. 3. “Patent Owner applies the plain and ordinary meaning of the challenged claims.” Prelim. Resp 11. At this stage, no need exists to expressly construe any claim terms to resolve any dispute between the parties.12 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“contention that either of the cited documents alone discloses all the elements of these limitations. And, the disclosure relied on in Exhibit 1007 is not alleged to be found in Exhibit 1009 and vice-versa. Patent Owner has not shown that any of the pre-May 14, 2016, Korean applications from which the ’281 claims priority includes disclosure of all the elements recited in limitations 1.9 and 8.6. At least at this stage, we determine that Petitioner has sufficiently shown, for the purpose of institution that Josiam is prior art.16 We credit the testimony of Dr. Buehrer cited in the Petition that none of the Korean applications to which the ’281 patent claims priority filed earlier than May 14, 2016, “explicitly, implicitly, or inherently discloses using both the bandwidth field of the HE-SIG-A and the resource unit allocation field of the HE-SIG-B to indicate channel puncturing information as the claim elements require. . . . At best, these documents discuss indicating unused channels using either HE-SIG-A or HE-SIGB fields—but not both.” Pet. 7 (citing Ex. 1003 (Buehrer Decl.) ¶¶ 90–91). Dr. Buehrer’s testimony has not been shown by Patent Owner to be inaccurate.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,687,281
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.