- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentablePTAB · Mar 13, 2026 · IPR2021-01266 · APJ John D Hamann · IPR · Remand
On remand, the Board held claims 29, 36–38, 44–46, 48, 49, and 56–58 unpatentable as obvious over Reime, with additional grounds also supporting the challenged claims.
RulingsRemand decision- ExcludeMotion to exclude, deniedDenied
“In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 32) and Petitioner filed an Opposition (Paper 33). We denied this motion. See Final Dec. 58–61.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“transmission paths. See Pet. Reply 14–15; PO Sur-reply 15. And we agree with both parties that the light that is transmitted directly through the plate to the sensor element does not have intervening reflections—such is consistent with the plain and ordinary meaning of “directly to.” See PO Resp. 31–32; Pet. Reply 14–15; PO Sur-reply 15. Nothing in claim 48’s language, however, requires that all of the reflected light be transmitted directly to the sensor element, which Patent Owner argues. Ex. 1001, 70:32–35; PO Resp. 31–32; PO Sur-reply 14–16. Rather, we agree with Petitioner that the claim language “merely requires that some light reflected by the object goes ‘directly to’ at least one sensor element once it is transmitted through the viewing plane defining plate.” Pet. Reply 14. We also agree that “none of these dependent claims purport to be exclusive of one another.” Id. at 15. Rather, claims 46–48 simply require some light be transmitted (or propagated) for their particular transmission path, without reciting all light. See Ex. 1001, 70:24–35.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We find Petitioner’s arguments based on Reime alone insufficient. Thus, we find that Petitioner does not show by a preponderance of the evidence that claim 49 is rendered obvious by Reime alone.” slip op. at 52
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“And in view of the above, we find persuasive Dr. Bederson’s testimony that “[c]hoosing a multi-element detector or a single-element detector would have been a simple design choice using commercially available detectors.” Ex. 1002 ¶ 117. Accordingly, we find that one of ordinary skill in the art would have found it obvious for Reime’s receivers to be implemented using discrete single-element detectors. See KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We find unavailing Patent Owner’s argument that “Petitioner relies on expert testimony to gap-fill missing elements regarding Reime’s failure to disclose or suggest the different claim arrangements of detector elements in a ‘detector assembly.’” PO Resp. 78 (citing Ex. 1002 ¶¶ 111–119; Ex. 2056 ¶ 171). Rather, in light of Reime’s teachings, coupled with the general knowledge of one of ordinary skill in the art, it would have been obvious to employ discrete single-element detectors for Reime’s receivers. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony to supply an element of a claim). We appropriately consider such evidence of the knowledge that one of ordinary skill in the art would have had as part of our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). Moreover, “AAPA can be important evidence of general background knowledge, and general knowledge can be used to supply a missing claim 1371, 1378–79 (Fed. Cir. 2025). Here, Petitioner relies on the cited AAPA as evidence of one of ordinary skill in the art’s general knowledge at the time of the ’093 patent, and the AAPA is not the basis for this ground. See Pet. 4, 42–43; Pet. Remand 4–5. As Shockwave Med. explains, Federal Circuit “case law has long recognized numerous permissible uses for general background knowledge in an IPR such as, ‘for example, furnishing a motivation to combine, or supplying a missing claim limitation.” 142 F.4th at 1378–79 (quoting Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; Koninklijke, 948 F.3d at 1337–38)).” slip op. at 31
Patent outcomesUS 9,569,093 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,569,093 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentablePTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand
On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.
RulingsRemand decision- ExcludeMotion to exclude, deniedDenied
“In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3
- Skill levelSkill level board ownOther
“one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12
Patent outcomesUS 8,624,850 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,624,850 - 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 · Oct 30, 2025 · IPR2025-00817 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on the Boerjes-Geng and Boerjes-Geng-Babayoff obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, we determine that Petitioner has developed this ground sufficiently to meet the reasonable likelihood standard for institution. Having determined that Petitioner has met its burden as to its Ground 2 arguments, and because the Board must institute on all grounds or none, SAS Institute Inc. v. Iancu, 584 U.S. 357, 364–65 (2018) and 37 C.F.R. § 42.108(a), we institute trial in on all grounds presented in this proceeding. Nevertheless, we address the additional grounds below.” slip op. at 24
- Skill levelSkill level petitioner adoptedOther
“Pet. 16 (citing Ex. 1003 ¶¶ 27–30). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“The parties indicate that in the co-pending litigation in the District Court for the Western District of Texas (see supra Section I.B), the Court provided preliminary constructions of two specific claim limitations. Pet. 16–17; Prelim. Resp. 8. Patent Owner adds that “district court subsequently adopted these constructions in its final claim construction order.” Prelim. Resp. 8 (citing Ex. 2001). We determine that the constructed limitations do not impact the analysis below, but nonetheless, we adopt this those constructions for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“identify areas that need replacing, such as ‘a margin line’ to be removed, ‘areas of poor margin preparation,’ and ‘holes or areas of incomplete scan[s],’” and that the user can identify regions of a prepared tooth surface requiring additional preparations and “supplemental scanning” (Pet. 32 (citing Ex. 1004 ¶¶ 189, 193, 196)), Boerjes is silent with respect to replacing at least a portion of the removed surface portion of the model using the received second scan data of the patient’s teeth, per claim 1. Boerjes certainly contemplates the re-scanning of the dentition, but does not assert partial insertion of new data into an existing 3D model. Even under the “comprising” language of claim 1, for example, the complete replacement of a 3D model cannot teach or suggest “replacing at least a portion of the removed surface portion” without repudiating the language of the claim by making a portion be the entire model. Even if, as Petitioner asserts, “removing portions of a virtual model has been a well-known and routine technique in 3D modeling,” and the “process of replacing a user-identified portion would have been well within the skills of a POSITA” (Pet. 35), the disclosure of Boerjes does not teach or suggest such processes. Although Boerjes allows for the possibility that portions of a model can be identified as needing replacement or supplementation, it does not disclose the partial replacement required by the instant, independent claims. Boerjes’s actual disclosure details that supplemental scanning is used to compensate for an inadequate scan, but not disclosed to be used to stitch together before-and-after models that have undergone an intervening physical change. slip op. at 18
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 10,791,936 - PTAB · Oct 27, 2025 · IPR2025-00816 · APJ Kristina M Kalan · IPR · Institution
Instituted IPR on all challenged claims 1–19; Ground 1 met the reasonable-likelihood threshold, while Ground 2 was instituted under the all-grounds rule.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of the Chishti patents and Sachdeva to meet the limitations of the claims challenged under this ground.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of the Chishti patents and Sachdeva to meet the limitations of the claims challenged under this ground.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away found
“with Chishti-876’s purported teaching away and disparagement, we note again that “round-tripping” is defined in the Specification as “the technique of moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth.” Ex. 1001, 13:8–12. Chishti-876 teaches that its “path scheduling algorithm determines the treatment path while avoiding ‘round-tripping,’ i.e., while avoiding moving a tooth along a distance greater than absolutely necessary to straighten the teeth. Such motion is highly undesirable, and has potential negative effects on the patient.” Ex. 1005, 14:46–51. The Petition does not expressly address this teaching in Chishti-876, nor does it address the prior Board finding in the ’444 IPR, in which the Board recognized that this teaching constitutes a teaching away from round-tripping. See Ex. 1008, 11– 12. On this record, it appears that Chishti-876 teaches away from “moving a tooth along a distance greater than absolutely necessary to straighten the teeth.” In short, Chishti-876 disparages “moving a tooth along a distance greater than absolutely necessary to straighten the teeth” (Ex. 1005, 14:46– 51) which is a broad statement that appears to encompass the more specific round-tripping movement taught in Becker. Petitioner itself concedes that “indirect movement was understood to be avoided if possible.” Pet. 17. Although Petitioner attempts to characterize indirect movement or round-tripping as a preferable or necessary option (see, e.g., Pet. 15–17), these arguments are insufficiently supported on this record.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of August 30, 2006 (the earliest claimed priority date) would have been part of an interdisciplinary team. This team would have included a member with an advanced degree related to dentistry (e.g., BDS, MDS, DDS, DMD) with experience in orthodontics, including 1–3 years of orthodontic training or equivalent experience, and experience using clear aligners. The team may have also included members with a degree in a technical area related to software, graphics, computers, or a related discipline. This technical team member would have had 1–3 years of software development experience. For all team members, more education could substitute for experience and vice versa.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,369,456 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITA
“Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,524,879 - 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 - Mobileye Global, Inc. v. Facet Technology Corp.Rehearing deniedPTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,335,255 - PTAB · Apr 17, 2025 · IPR2024-01379 · APJ Kevin C Trock · IPR · Institution
The Board denied institution of review of claim 20, finding that the Fintiv factors favored discretionary denial under § 314(a).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“(which we address in more detail below) turns on the determination of the meaning of the claim term “periodically.” We note that the District Court has construed the term “periodically monitor” to mean “monitor at regular intervals of time.” See Sec. II.C below. Given this construction, which we preliminarily agree with at this stage, we cannot agree with Petitioner that the Petition presents “a strong case for obviousness.” Thus, we find that Factor 6 weighs in favor of exercising discretionary denial.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“periodically” as it is used in claim 20, with Petitioner arguing that “periodically’ means “repeated . . . over time” and Patent Owner arguing that “periodically” means “at fixed intervals.” See Pet. 25; Prelim. Resp. 8. Our preliminary determination of the ordinary and customary meaning of the term “periodically” as it is used in claim 20 substantially impacts our view of the merits in this case as this issue is the principal one raised by Patent Owner in its Preliminary Response. See Prelim. Resp. 5–22. slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s description of a person of ordinary skill appears consistent with the subject matter of the ’996 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶¶ 55–56. We adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C. Claim Construction” slip op. at 18
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,809,996 - Apple Inc. v. Varia Holdings LLCInstitutedPTAB · Mar 11, 2025 · IPR2024-01362 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds after finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. See 35 U.S.C. § 325(d); 37 C.F.R. § 42.4(a) (providing that the Board institutes on behalf of the Director). The Board has outlined factors it considers in determining whether to exercise discretion to deny institution under § 325(d): (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the 5 Holloway et al., WO 02/49322 A2, filed Dec. 11, 2001, published June 20, 2002. Ex. 1006. 6 Pitroda, US 7,308,426 B1, filed Aug. 11,1999, issued Dec. 11, 2007. Ex. 1007. cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton Dickinson”). The Becton Dickinson factors apply when a petition relies on art or arguments previously presented to the Office during any proceeding pertaining to the challenged patent, including reexamination, reissue, and AIA post-grant proceedings. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8–10 (PTAB Feb. 13, 2020) (precedential). Advanced Bionics explains how the Becton Dickinson factors fit into a two-part framework that examines: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–19 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert contends that person of ordinary skill in the art (POSITA) [W]ould have been someone knowledgeable in mobile communication devices and components used therein, cellular radio systems, and wireless communications, such as those used for voice calling and radio frequency identification (RFID). That person would have at least a Bachelor’s degree in Electrical Engineering, with a background in radio frequency communications as well as approximately two years of experience working with or researching radio frequency communication systems. Ex. 1003 ¶ 20. Patent Owner does not offer a specific definition of a person of ordinary skill in the art. See, generally, Prelim. Resp. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2023). Under this standard, claim terms have their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner states that “[n]o formal claim constructions are required in this proceeding.” Pet. 6. However, Petitioner submits “preliminary” claim constructions proposed by the parties in the District Court case, including proposed constructions for the claim terms “transceiver” and “transmitter.” Pet. 7–9. Patent Owner states that it “does not dispute the Petition’s statement on claim construction for the purposes of this Preliminary Response.” Prelim. Resp. 8. Notwithstanding the parties’ statements disavowing the need for claim construction, in our analysis set forth below we consider construction issues regarding the independent claim terms “voice call communication,” “voice call signal,” “transceiver,” and “transmitter.” We invite the parties to further consider these issues going forward.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,381,974
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.