- Cambridge Industries USA, Inc. / Accelight Technologies, Inc. v. Applied Optoelectronics, Inc.No claims unpatentablePTAB · Jul 27, 2026 · IPR2025-01570 · APJ Monica S Ullagaddi · IPR · Final written decision
The majority held claims 1–19 not shown unpatentable: Wang did not anticipate claims 1–10, and Wang with Xiong did not render claims 11–19 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“field of the ’690 Patent would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 14 (citing Ex. 1003 ¶ 22). Petitioner also states that “[i]ndividuals having different educational backgrounds and supplemental experience might still be of ordinary skill in the art if such experience compensates for any deficiencies in education relative to the criteria stated above” and “[i]n some cases, additional education might be an acceptable substitute for some experience, or vice versa.” Id. Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art. See e.g., PO Resp. 9. We adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’690 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent is self-explanatory and would have been recognized by a [person of ordinary skill in the art] as having plain and ordinary meanings.” Pet. 10. “Petitioner submits that no special constructions are required” because “the claim terms appear understandable in the context of the disclosure provided by the specification of the ’690 Patent.” Id. (citing Ex. 1003 ¶ 58). Patent Owner “agrees that the claim terms should be given their plain and ordinary meaning as understood by a [person of ordinary skill in the art].” PO Resp. 10. After reviewing the arguments and evidence before us, we determine that we do not need to expressly construe any claim term to resolve any controversy in the proceeding. 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))).” slip op. at 8
- BurdenNot shown unpatentable
“Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard. For the foregoing reasons, we are not persuaded that Petitioner sufficiently establishes that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Wang by a preponderance of the evidence.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Wang discloses that “the isolator 100 is bonded to the substrate by means of an adhesive” in which “[t]he adhesive is not only used to fix the isolator 100 to the substrate, but also fills a gap between the isolator 100 and the substrate to improve the installation accuracy of the isolator 100.” Ex. 1006 ¶ 41 (emphasis added). Petitioner does not explain how filling in a gap between the isolator 100 and a substrate necessarily results in “each of the plurality of optical isolators [being] disposed substantially in parallel relative to each other,” as recited in claim 1. The cited portion in paragraph 43 references Figures 5 and 6, which depict Embodiment 1 of Wang and are reproduced below. Figures 5 and 6 of Wang depict isolators 100, base 311, and baffles 312. Although paragraph 44 of Wang states that “[t]he substrate includes a base 311, and baffles 312 and isolators 100 sequentially disposed on the base 311,” Petitioner does not sufficiently persuade us how Wang’s disclosure “sequentially disposed” isolators necessarily discloses that the isolators are “disposed substantially in parallel relative to each other” as recited in independent claim 1. Ex. 1006 ¶ 44. Although the cited portion in Figure 6 of Wang apparently shows a possibly parallel arrangement of Petitioner cites to Dr. Kirk’s Declaration, but Dr. Kirk does not opine on why cited portions of Wang necessarily disclose or depict the claimed “disposed substantially in parallel relative to each other” requirement. Ex. 1003 ¶¶ 73, 74; Ex. 1006 ¶¶ 41, 43, Figs. 6, 8, 10. At best, Dr. Kirk testifies that “a POSITA would have understood that Wang anticipates Claim 1.” Ex. 1003 ¶ 75. Also relevant to our analysis is that this is an anticipation ground and Petitioner is required to show that the reference discloses not only the elements of the claimed invention, but also discloses those elements as arranged in the claim. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although our Institution Decision concluded that Petitioner had demonstrated a reasonable likelihood of prevailing with respect to its anticipation challenge to independent claim 1 applying Wang (Inst. Dec. 6), at this stage of the proceeding we are required to evaluate Petitioner’s challenges under a higher standard, the preponderance of evidence standard.” slip op. at 12
Patent outcomesUS 10,788,690 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,788,690 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Oct 8, 2025 · IPR2025-00701 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’138 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–14 of the ’138 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 6. Patent Owner does not address claim construction. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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))).” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“a Ph.D. or master’s degree in electrical engineering, physics, materials science, or a related field, and at least one year or four years, respectively, of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent. Pet. 8 (citing Ex. 1024 ¶¶ 25–29). Petitioner contends that less work experience can be compensated for by a higher level of experience and vice versa. Id. (citing Ex. 1024 ¶ 25). Petitioner also asserts that the proposed level of skill would be the same under any of the United States, Japanese, or PCT application dates. Id. at 8–9 (citing Ex. 1024 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s proposed level of qualifications for one of ordinary skill in the art. Prelim. Resp. 20. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’138 patent and the asserted prior art of record.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, Petitioner relies upon Parkin, and its layers 115 and 175, as the claimed first and second ferromagnetic material layers, respectively. See Pet. 10, 16. Petitioner admits that these layers are 8 In the Petition, Petitioner refers to the lower electrode “ferromagnetic layer 110’ as discussed in Claim 1[a]” in the discussion of limitation 1[d]. Pet. 18. Petitioner’s reference to “layer 110’” appears to be in error because the Petition’s discussion for limitation 1[a] refers to layer 115 of Parkin, as does Dr. Bokor’s testimony related to limitations 1[a] and 1[d]. Pet. 10; Ex. 1024 ¶¶ 109, 136. amorphous, but contends that, as Parkin discloses, these layers may be annealed. Id. at 17. Petitioner, however, refers to Parkin’s disclosure that only “a portion of the storage layer 175” is crystallized after annealing. Id. at 17–18 (citing Ex. 1062, 18:51–55) (emphasis added). Petitioner also relies upon Parkin’s “thin crystalline ferromagnetic layer” that is crystallized to teach limitation 1[d]. Id. at 18 (citing Ex. 1062, 18:55–59; Ex. 1024 ¶¶ 131–132) (emphasis added). Dr. Bokor additionally testifies that it is “Parkin’s ‘thin crystalline ferromagnetic layer’ of CoFeB” that meets the “entirely crystallized” requirement of limitation 1[d]. Ex. 1024 ¶ 132. Parkin, however, states that a thin crystalline ferromagnetic layer is formed, but “the bulk of storage layer 175 remains amorphous.” Ex. 1062, 18:55–60 (emphasis added). Petitioner fails to reconcile how its assertions that the first and second ferromagnetic layers, which are mapped to the totality of layers of 115 and 175, meet the limitation that the first and second ferromagnetic layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full depth of certain “layers” of Parkin for the teaching of the ferromagnetic layers, but then only relies upon thin portion of that depth for the assertion that the “layers” are entirely crystallized.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,367,138 - PTAB · Aug 26, 2025 · IPR2025-00437 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–19 on all grounds, finding a reasonable likelihood that Wang anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) did not file a Preliminary Response on the merits of patentability. Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only 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 contends that “no special constructions are required.” Pet. 10. We agree and do not expressly construe any claim term.” slip op. at 4
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,788,690 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution deniedPTAB · Aug 26, 2025 · IPR2025-00436 · APJ Mitchell G Weatherly · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Mizobuchi or Akashi anticipates any of claims 1–17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one challenged claim.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“All independent claims recite “a light engine driving circuit disposed on the substrate.” Ex. 1001, 9:59 (claim 1), 10:64 (claim 12), 12:7 (claim 15). Petitioner contends that “Mizobuchi discloses a light engine driving circuit disposed on the substrate that includes a clock data recovery (“CDR”) circuit and a power supply circuit.” See Pet. 19 (citing Ex. 1006, 3:57–4:18, 12:27–41, Figs. 2, 3A; Ex. 1003 ¶ 76 while addressing limitation 1d); see also id. at 26–28 (addressing claims 12 and 15 by cross-referencing showing for claim 1). Petitioner identifies the driving circuit on Mizobuchi’s “first circuit board” 2 in the annotated version of Mizobuchi’s Figure 2, reproduced below. See Pet. 19.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that the Board may find it necessary to interpret “feedthrough device,” “interconnect device,” and “opposing arrangement.” Pet. 8–11. Patent Owner responds to Petitioner’s proposed interpretations of these terms, but contends that the Board need not interpret them to determine whether to institute review. Prelim. Resp. 17–18. For reasons that become apparent below, we agree with Patent Owner and do not expressly construe these terms. B. Legal Standards” slip op. at 4
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,313,024 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution deniedPTAB · Jul 29, 2025 · IPR2025-00434 · APJ Monica S Ullagaddi · IPR · Institution
Institution was denied for claims 1–7 because the Petition did not show a reasonable likelihood that either Shen or Soldano anticipates any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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.” 35 U.S.C. § 314 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’301 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - PTAB · Apr 30, 2025 · IPR2024-01494 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 5, 6, and 9–20 on all asserted grounds after finding a reasonable likelihood that claim 5 would have been obvious over Bowen and Soukup.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 5, 6, and 9–20 of the ’909 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments based on the current record. Dr. Bokor testifies that “as is evident from the TMR equation, . . . lowering the resistance (barrier height) for parallel spin electrons [(i.e., Rp)] compared to antiparallel [(i.e., Rap)] improved TMRs.” Ex. 1024 ¶ 169 (citing Ex. 1035, 3273) (emphasis added). Dr. Bokor’s testimony is consistent with the TMR equation above, which has Rp as the only term in the denominator, and reflects that Rp would be lowered disproportionally, or otherwise the TMR would not have “improved.” Id. It also appears to be supported by other evidence of record. See Ex. 1035, 3273 (noting the” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Finally, we note that, although Petitioner has made a sufficient showing with respect to obviousness, we are not persuaded by Petitioner’s inherency argument. See Pet. 36. Specifically, Petitioner has not established that a barrier height of 0.1–0.85 eV is necessarily present in, or the natural result of, a tunnel barrier layer having some amount of oxygen vacancy defects. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (“When the prior art does not expressly disclose a claim limitation, ‘inherency may supply a missing claim limitation in an obviousness analysis.’ . . . Inherency is established in the context of obviousness when ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’”). Petitioner points to the ’909 patent’s statement that “[w]hen there are oxygen vacancy defects, the potential barrier height of the MgO tunnel barrier is thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV), which is thought to result in an increase in the tunneling current.” Ex. 1017, col. 7, ll. 19–23; see Pet. 36. Bowen, however, has “oxygen vacancy defects” in its MgO layer and “[o]xygen vacancies are naturally present in every oxide” according to Petitioner, but Bowen discloses a barrier height of 0.9 eV, which is outside the claimed range (albeit only slightly). Pet. 13, 23–24. Thus, Bowen contradicts Petitioner’s assertion that a barrier height within the claimed range of 0.1–0.85 eV is inherent when there are oxygen vacancy defects.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,069,737 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01384 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’403 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–8 of the ’403 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner “does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition.” Prelim. Resp. 17. In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner, as it is consistent with the ’403 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 26. Patent Owner does not address claim construction in its Preliminary Response. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Importantly, Soukup indicates a different relationship between the amount of oxygen vacancy defects in the barrier layer and the barrier height, depending on which method is used. Specifically, Soukup explicitly found that “[t]he apparent barrier height determined from the zero-field intercept went up for increasing oxygen pressure [(i.e., less oxygen vacancy defects)] and the barrier height determined from the Arrhenius plot went down.” Ex. 1028, 3229 (Abstract) (emphasis added).15 That disclosure is reflected in Table I, where Soukup shows the results for three fabricated samples with increasing oxygen pressure during MgO deposition. Id. at 3233. Patent Owner provides another annotated version of Table I below (Prelim. Resp. 45): 15 Soukup’s conclusion appears to refer to the trend of the respective increasing or decreasing barrier heights values under the two different mathematical analyses methods. Annotated Table I above shows (in red) that the barrier height decreases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition, shown in the PO2 column, decreases) using the zero-field intercept method, and shows (in blue) that the barrier height increases as oxygen vacancies increase (i.e., as the oxygen pressure admitted during MgO deposition decreases) using the Arrhenius plot method. Prelim. Resp. 45. In other words, Petitioner’s alleged inverse relationship is present for the zero-field intercept method, but not for the Arrhenius plot method. See id.; Pet. 37–38. “The barrier height cannot both increase and decrease with more oxygen vacancy defects,” and Petitioner does not attempt to reconcile or explain Soukup’s disparate teachings. See Prelim. Resp. 45 (emphasis omitted). We agree with Patent Owner that Petitioner is inconsistent in relying on one method as allegedly teaching a barrier height within the claimed range, while at the same time relying on the other method for a motivation under its obviousness theory. Prelim. Resp. 45–49. If a person of ordinary skill in the art would have understood that the Arrhenius plot method was the appropriate method for determining barrier height, as Petitioner argues in asserting that Soukup teaches a barrier height of 0.33 eV, that person would have understood that “the barrier height increases as oxygen vacancies increase” (in blue above), and Petitioner’s obviousness theory of adding oxygen vacancies to lower Bowen’s barrier height is incorrect. See id. at 47. If, however, a person of ordinary skill in the art would have looked to the zero-field intercept method, that person “would have understood that all of Soukup’s tested samples . . . had barrier heights” (in yellow above) “above the claimed range of 0.2–0.5 eV.” See id. at 48. Petitioner cannot have it both ways. Based on the record before us, Petitioner has not shown sufficiently” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,884,403 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01385 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4 would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’263 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–4 of the ’263 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the ’263 patent would have had a “Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 29 (citing Ex. 1024 ¶ 25).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. 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))).” slip op. at 7
- BurdenNot shown unpatentable
“As discussed above, Petitioner fails to explain why one of ordinary skill in the art would have selected the barrier height value it relies upon. And given the disparity of Soukup’s barrier tunnel values under the different methods of analyses, the reference is, at best, ambiguous as to which values are accurately representative of barrier height. Additionally, the evidence supports that the apparent barrier height value that Petitioner relies upon (“about 0.33 eV”) will be a different higher value, so the actual value of the barrier height is uncertain. Accordingly, we do not find that Petitioner has met its burden to sufficiently demonstrate that a person of ordinary skill in the art would have understood Soukup to teach or suggest the claimed range of limitation 1[e] in that there is insufficient evidence presented that supports that the selected Soukup barrier height value represents an accurate value.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,319,263 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 13, 2025 · IPR2024-01386 · APJ Monica S Ullagaddi · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–6 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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 Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Having considered the parties’ arguments and the evidence of record, we determine that, for the reasons discussed herein, Petitioner does not demonstrate a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. We thus decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 28–29 (citing Ex. 1024 ¶ 25). Petitioner further states that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa” and that “[t]his level of ordinary skill would be the same if the relevant time period were around the March 12, 2004 or October 28, 2004 Japanese priority applications, or the March 10, 2005 PCT filing date.” Id. at 29 (citing Ex. 1024 ¶¶ 24–25). Patent Owner states that “[f]or purposes of this Preliminary Patent Owner Response only, Patent Owner does not challenge Petitioner’s POSA [person of ordinary skill in the art] definition because the Petition fails even if Petitioner’s POSA definition is adopted.” Prelim. Resp. 20 (citing Pet. 28–29). To resolve the institution question, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claims using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b). Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 25. Patent Owner does not directly” slip op. at 7
- BurdenNot shown unpatentable
“Thus, the cited teachings of Sunai support Patent Owner’s position that, even if adding boron into a ferromagnetic layer of CoFe results in a higher TMR as taught by Sunai, the addition suppresses crystallization. As to the issue of the teaching of the BCC structure of the alloy, not only does Petitioner’s challenge applying Bowen and Sunai fail to demonstrate a teaching or even a suggestion of a CoFeB alloy with a BCC cited by Petitioner does not either. Only one of Petitioner’s cited pieces of underlying evidence refers to a BCC lattice structure, Parkin, but Parkin’s BCC structure is disclosed with respect to a CoFe layer, and not a CoFeB layer. Ex. 1062, 18:55–59 (“The simple cubic crystalline MgO layer thus provides a template for the formation of a thin crystalline ferromagnetic layer which has the bcc structure of CoFe and is oriented in the same (100) direction as the MgO layer.” (emphasis added)).” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,608,198
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.