- Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 of determining whether Petitioner meets the threshold for initiating 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 deemed waived. 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 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Jun 11, 2025 · IPR2025-00263 · APJ Barry L Grossman · IPR · Institution
Instituted IPR for claims 1–30 on all asserted grounds; the Board found a reasonable likelihood that claims would be unpatentable over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We have determined that there is a reasonable likelihood that Petitioner will prevail on at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims on each asserted ground. PGS Geophysical, 891 F.3d at 1360 (A decision to institute is a “yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.”).” slip op. at 42
- BurdenInstituted
“limitations of clauses 1.3 and 1.4, but concedes that Haley does not disclose that its driver member has “at least one longitudinal edge with a plurality of spaced-apart protrusions,” as required by clause 1.4. Petitioner further asserts, however, that it would have been obvious “to replace Haley’s hydraulic lifter with the claimed ‘lifter,’ disclosed by [Lai]”. Pet. 13. (citing Ex. 1003 ¶ 54). Dr. Vallee’s cited Declaration testimony provides his opinion on this issue, which is consistent with Petitioner’s argument. Petitioner also asserts that “Lai discloses an electrically-powered, mechanical lifting mechanism with a structure that is essentially identical to the ‘lifter member’ disclosed in the ’776 patent. Pet. 13. Petitioner provides side-by-side colored figures from the ’776 patent and from Lai, reproduced below, to illustrate its argument. Pet. 14. According to Petitioner, the side-by-side comparison of Petitioner’s colored versions of Fig. 12, from the ’776 patent, with Petitioner’s colored versions of Figs. 4 A–D, reproduced above, illustrate why and how the proposed modification would have been obvious. As described by Petitioner, the “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow), with pins 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). Pet. 13 (citing Ex. 1001, 9:30–46, 16:34–48, Fig. 12). Petitioner also cites the “two-pin variants: lifter members 465 and 480” shown in Figs. 31, 33 of the ’776 patent. Id. Petitioner also asserts that, as shown in the side-by-side comparison” slip op. at 33
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededOther
“Petitioner asserts the term “lifter member” in the claims of the ’776 patent is “a means-plus-function term” because the claims “lack any ‘recital of structure, material, or acts in support thereof’ for the ‘lifter’ element.” Pet. 7 (citing 35 U.S.C. § 112(f)). Petitioner also asserts “[t]he Federal Circuit held that the term ‘lifter member’ in the related patents is a means-plus-function term subject to §112(f).” Pet. 7. Petitioner cites no authority for this assertion. We understand this assertion to refer to the decision in Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022), identified by Petitioner as a related matter. Pet. 2. In this case, which involved patents from the same family as the ’776 patent (see Section I.C of this Decision), the Federal Circuit concluded that “§ 112 ¶ 6 applies to the ‘lifter member’ limitation, and it must be construed to cover only ‘the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.’” Id. at 22 F.4th 1379–1381. “Where multiple patents derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.” Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1378 (Fed. Cir. 2019) (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (internal quotation marks omitted). Patent Owner asserts that Petitioner: fails to comply with the requirement of 37 C.F.R. § 42.104(b)(3) to specifically identify the structure in the specification associated with that element. As ‘lifter’ is present in every challenged claim under all four grounds, Petitioner’s failure to provide a claim construction for ‘lifter’ is fatal to its Petition. Prelim. Resp. 13. We disagree. First, the claims in the ’776 patent do not use the single word “lifter” alone. The term used in some of the claims, see, e.g., independent claims 1 and 17, and the claims dependent from claims 1 or 17, is “lifter member.” We recognize that the written description in the ’776 patent states “the rotary-to-lifter 100 is also sometimes referred to herein as a ‘lifter member,’ or simply as a ‘lifter.’” Ex. 1001, 9:5–7. This suggests that that term “lifter” is intended to mean the “lifter member,” which makes the use of either term a distinction without a substantive difference. Moreover, neither independent claims 9 or 24, nor the claims dependent from claims 9 and 24, use the word “lifter” or “lifter member. Second, as stated in Petitioner’s Preliminary Reply, the Petition “identifies the portions of the specification that describe the corresponding structure for the ‘lifter’ when comparing its structure to that of the Lai prior art.” Prelim. Reply 1. The Petition provides a colored version of Figure 12 from the ’776 patent (reproduced below) and identifies the following corresponding structures from the Specification of the ’776 Patent: The “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow [ ]), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’776 patent, 9:30–46, 16:34–48, Fig. 12. The ’776 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. [citing] ’776 patent, 32:15–30, 32:48–63. Petition at 13. Based on the record before us, we determine that this identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial, as permitted by our rules.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to mean “a chamber that is distinct from the displacement volume of the hollow cylinder and contains part of the working air volume during operation.” Pet. 8. According to Petitioner “there is nothing in the intrinsic record or any of the claims of the ’776 patent that prevents the ‘main storage chamber’ from being in the hollow cylinder, so long as it is distinct from its separately-recited ‘displacement volume.’” Id. at 9 (emphases added). Patent Owner asserts that “[g]rounds 2 and 4 each requires this Board to interpret the ‘storage chamber’ to be the same structure as the hollow cylinder.” Prelim. Resp. 31. According to Patent Owner, “[t]he Federal Circuit, considering both parties’ claim construction arguments, rejected that construction.” Id. Patent Owner does not provide any citation to support its reference to the Federal Circuit decision. It appears to be a reference to the Kyocera decision considering review of the ITC determination. See Kyocera, 22 F.4th at 1383. That decision, however, construed claims in a related patent to “require two distinct structures: the main storage volume and a smaller “hollow cylinder” contained within the main storage volume. Based on the record before us, Petitioner’s proposed construction is consistent with the Federal Circuit’s construction, which states two structures can be distinct even if one distinct structure is “contained within” the other distinct structure. Although the parties dispute the construction of the “storage chamber” claim limitation, this dispute relates only to Grounds 2 and 4. See Prelim. Resp. 31. We need not resolve it to determine whether to institute review. The parties are welcome to develop their arguments regarding this claim limitation during trial. 3. Conclusion Regarding Claim Construction Our claim construction analyses in this decision to institute a trial do not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,241,776 - PTAB · Jun 11, 2025 · IPR2025-00264 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Koki would prove the claims obvious over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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.” 35 U.S.C. § 314(a). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute inter partes review of claims 1–15 on the grounds asserted in the Petition. B.” slip op. at 2
- BurdenInstituted
“not identical” to the structure that Petitioner identifies as corresponding to the “lifter” claim limitation. Prelim. Resp. 19. We agree that these structures are not identical. But on this record, they appear, at least preliminarily, to be equivalent. As Petitioner explains, both structures utilize a rotatable cam with pins to translate a driver (driver member 90 of the ’167 Patent and hammer 6 of Lai) into a position where the driver is ready for use. See Pet. 12–15. Patent Owner does not otherwise contest Petitioner’s showing that Lai teaches or suggests the subject matter set forth in limitations 1.4, 1.5, and 1.6, and we find Petitioner has made a sufficient showing that Lai does so.” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition explicitly states that the “lifter” limitation is a means- plus-function limitation—a contention Patent Owner does not dispute. See Pet. 6; Prelim. Resp. 9–11. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic] Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. The Petition identifies the following corresponding structures from the Specification of the ’167 Patent: The “lifter” of the ’167 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’167 patent, 9:36-52, 16:39-53, Fig. 12. The ’167 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31 and 33. ’167 patent, 32:21-36, 32:54- 33:2. satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner has identified the storage chamber of Haley as being chamber 85, a volume of space bounded by housing 40, extension cylinder 76, and elongate accumulator shell 80. See Pet. 9–10; Ex. 1004 Fig. 1. Haley’s elongate accumulator shell 80 (which Petitioner identifies as the removal top cap) is not the same as chamber 85; it is merely one component of the structure that encloses chamber 85. See id. And, though the Petitioner-identified removable top caps of Haley (a cylinder-shaped component, see id.) and Saari/Enstrom (a removable sleeve that extends into the interior of Saari/Enstrom’s cylinder, see id. at 48–49) have different Petitioner-identified storage chambers. We, therefore, are not persuaded that Petitioner’s contentions necessarily rely on implicit and inconsistent claim constructions.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,845,167 - PTAB · Jun 11, 2025 · IPR2025-00262 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Haley and Lai render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Other 314aDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 34–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis.” slip op. at 10
- Skill levelSkill level board ownOther
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The parties’ briefs do not propose a specific definition of a level of ordinary skill in the art. See generally, Pet., Prelim. Resp. Dr. Vallee, however, testifies that one of ordinary skill in the art relevant to the ’954 patent: would have either (i) a Master’s degree in mechanical engineering with at least two years of experience in power nailer design; (ii) a Bachelor’s degree in mechanical engineering with at least five years of experience in powered nailer design; or (iii) ten (or more) years of experience in powered nailer design. This experience in powered nailer design would include mechanical design, tool design, manufacturing, mechanics of materials, stress analysis, ergonomics, and human factors. Ex. 1003, ¶ 49. For purposes of this Decision, we adopt and apply Dr. Vallee’s formulation regarding the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 15–26. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic, ’954] Patent to perform the claimed function.” Prelim. Resp. 15. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter member” of the ’954 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’954 patent, 9:25–41, 16:32–46, Fig. 12. The ’954 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’954 patent, 32:12–27, 32:45–60. Pet. 15. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,478,954 - PTAB · Jun 11, 2025 · IPR2025-00261 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–20 on all grounds after finding a reasonable likelihood that Haley anticipates claims 1, 7, 8, 17, and 20 and Haley with Lai renders the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 33–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis. E. Claims 1, 7, 8, 17, and 20: Anticipation by Haley” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 10–14. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter” (“lifter member”) of the ’007 patent includes a rotatable cam lifter 100 (yellow below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’007 patent, 9:36–52, 16:39–53, Fig. 12. The ’007 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’007 patent, 32:23–38, 32:56–33:4. Pet. 17. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“gas pressure system” recited in the preamble of independent claims 1 and 17. Prelim. Resp. 21–22. Patent Owner further argues that Petitioner, through its comparison of claims 1 and 17 to Haley, improperly implies that the “gas pressure system” can be “limited to a distinct portion of a power tool.” Id. at 23. Patent Owner contends that such an interpretation is improper because the “gas pressure system” must refer to “the entire system,” because the “structure of the claims themselves . . . include[s] . . . every component of the tool.” Id. We disagree. The “gas pressure system” recited in the preambles of claims 1 and 17 expressly refers to a system that is “for a power tool” and thus does not necessarily refer to “the entire” tool or “every component of the tool.” Ex. 1001, 39:6 (claim 1), 40:51 (claim 17). Neither claim 1 nor claim 17 recites, for example, the lifter or driver, which are required elements of an “entire” tool. Id. at 39:6–22 (claim 1), 40:51–67 (claim 17). The lifter and driver are introduced in dependent claims 2 and 18. Id. at 39:23–30 (claim 2), 41:1–9 (claim 18). Still other necessary components of a tool, e.g., a motor and power source, are introduced in dependent claims 5 and 19. Id. at 39:40–42 (claim 5), 41:10–13 (claim 19). By contrast to claims 1 and 17, independent claims 9 and 14 recite a “portable fastener driving tool” and expressly recite many necessary components of such a tool including the driver, lifter, prime mover, and power source. Id. at 39:54 (claim 9), 40:20 (claim 14). Accordingly, we find that the “gas pressure system” of claims 1 and 17 broadly refers to a portion of a power tool rather than the “entire system” or “every component of the tool.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,034,007 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 28, 2025 · IPR2024-00255 · APJ Annette R Reimers · IPR · Final written decision
Claims 2, 4, and 6–10 are unpatentable as obvious over Bhattacharya and Zeng, and over Bhattacharya, Zeng, and Spain; claims 1, 3, and 11 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Second, the key differences between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill in the art at the time of the invention is that Patent Owner asserts “experience in wireless telecommunications and cellular technology is necessary,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 22–23 (citing Ex. 2018 ¶ 46); see also id. 44– 45. The ’104 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:13–20; PO Resp. 44. Bhattacharya is 9 Patent Owner refers to IPR2024-01209, but the correct citation is IPR2023- 01209. See PO Resp. 22. 1005, code (57), ¶¶ 1, 13; PO Resp. 44. Zeng is directed to handoff from one cell to another in a wireless cellular communication system to achieve continuous service. Ex. 1006, 1; PO Resp. 44. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1007, code (54), ¶¶ 1, 11; PO Resp. 44. We find that there is support in the ’104 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill in the art would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill in the art.” slip op. at 8
- Expert testimonyPetitioner expert creditedMixed
“In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’104 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 7; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 14
- BurdenUnpatentable
“Based on the evidence presented, Petitioner adequately establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to reach the Bhattacharya-Zeng combination with a reasonable expectation of success.” slip op. at 44
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’104 patent. Namely, the ’104 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”18 Ex. 1001, 3:50–60. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:56–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’104 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 3 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 27
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,561,104 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00031 · APJ Annette R Reimers · IPR · Final written decision
Claims 16–20, 24, 26, and 27 are unpatentable: claims 16, 19, 20, 24, and 27 are anticipated by Bhattacharya, and all challenged claims are obvious over Bhattacharya and Spain.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner for the following reasons. First, Patent Owner’s definition is consistent with our determination in IPR2023-01210, which involved the same ’358 patent, and Petitioner does not explain sufficiently why we should adopt a different definition. See generally Pet. Reply.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 42–44. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 4 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the entire trial record, we agree with Petitioner’s analysis with supporting evidence and credit Dr. Sundaresan’s testimony supporting Petitioner’s position. See Pet. 20–37. Thus, we determine that Bhattacharya discloses the recitations of claim 15. b. Remaining Claims 16, 19, 20, 24, and 27 Claims 16, 19, 20, 24, and 27 depend from claim 15. Ex. 1001, 13:19–21, 12:30–36, 12:52–55; 12:63–67. Petitioner accounts for the limitations recited in each of claims 16, 19, 20, 24, and 27. Pet. 37–42. Patent Owner does not offer any arguments specifically addressing the limitations of claims 16, 19, 20, 24, and 27. See PO Resp. passim. Petitioner shows, by a preponderance of the evidence, that each element of claims 16, 19, 20, 24, and 27 is disclosed by Bhattacharya.” slip op. at 41
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,400,358 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 7, 9, 32, 38, and 40 are unpatentable as obvious over Bhattacharya and Yost.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“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 key difference between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill at the time of the invention is that Patent Owner asserts that experience in “wireless networks, cellular radio systems, mobile communication devices and radio navigation systems,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 23. The ’753 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:15–23. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1004, code (57), ¶¶ 1, 13. Yost is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1008, code (57), 2:17–19. We find that there is support in the ’753 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner that Dr. Sundaresan’s declaration is substantively deficient and therefore should not be afforded weight. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 47–28. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’753 patent and the prior art analyzed in the Declaration. Ex. 1027 ¶ 14. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 15. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6–7.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed additional requirements of determining the boundaries of the area from an evaluation of calibration data should not be imported into the construction of “grid point.” See Pet. Reply 1, 5. The construction of “grid point” we adopt is supported by the disclosures of the ’753 patent. Patent Owner’s support and arguments for its proposed construction rely, in large part, on specific example methods of generating non-unform grid points (NUGs). See PO Resp. 27–32. We agree with Petitioner, however, that the intrinsic record supports that the term “grid point” encompasses both uniform and non-uniform grid points. See Pet. 8–13. The ’753 patent Specification identifies “grid points” as “NUGs or UGs” and further indicates that a “NUG” is a type of a grid point. Ex. 1001, 25:31–34, 26:32–35, 13:7–8 (“a grid point, such as a NUG”). Accordingly, the claims and Specification disclose embodiments where grid points are not limited to non-uniform grid points, and they may be uniform grid points.9 Patent Owner’s proposed construction would impermissibly read out embodiments of the ’753 patent that use uniform grid points rather than non-uniform grid points.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“The evidence supports that Petitioner has sufficiently demonstrated that Bhattacharya and Yost teach limitation [1b]. Bhattacharya discloses that empirical measurement of signal strengths are used to generate “expected signal-strength functions E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t),” with a grid overlaid onto a geographic region where the center of each square represents a location. Ex. 1004 ¶¶ 106, 115–117; see also Pet. 35. Petitioner asserts, and we agree, that Bhattacharya discloses associating the expected signal-strength function with locations in a region, and that data is stored in the “Expected Signal-Strength Database.” Pet. 35–36 (citing Ex. 1004 ¶ 85). We also agree that this association of location (point) with calibration data (signal strength) is sufficient for the teaching of a “grid point,” which is disclosed by Bhattacharya. Pet. 35–36; Ex. 1004 ¶¶ 85, 105–117, 120, 123; Ex. 1003 ¶ 77; Pet. Reply 14–15; Ex. 1027 ¶¶ 44– 45. We also agree that Bhattacharya teaches the generation of “grid points” by, at least, populating the Expected Signal-Strength Database with locations and expected signal strength data, which includes interpolating the locations between sampled locations. Ex. 1004 ¶¶ 85, 119, 120, 123; Ex. 1003 ¶¶ 77– 78; Ex. 1027 ¶ 45; see also Pet. 35–36; Pet. Reply 15–16. Petitioner further asserts, and we agree, that Yost teaches collecting empirical measurements within the grid square surrounding the geographic point and averaging these measurements. Pet. 37 (citing Sections V.2–3; Ex. 1008, 7:28–44; Ex. 1003 ¶ 79). Further, because it is supported by the teachings of Bhattacharya and Yost, we credit Dr. Sundaresan’s testimony that a person of ordinary skill in the art would have found that Yost’s small areas of predetermined size are similar to the grids and grid points in Bhattacharya. Ex. 1003 ¶ 79; Ex. 1008, 7:50–51; Ex. 1004 ¶ 106, Fig. 6. Yost discloses that by averaging the empirical signal strengths the effects of fast fading can be removed (Ex. 1008, 7:50–56), so we also credit Dr. Sundaresan’s testimony in this regard on the advantages of averaging the multiple empirical measurements in a grid square (Ex. 1003 ¶ 80). Petitioner further asserts, and we agree, that a person of ordinary skill in the art would have found it obvious that expected signal-strength functions of {E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t)} for a given grid point of Bhattacharya “may represent an average of calibration data from multiple locations within the grid square, and not simply represent the storage of the calibration data itself” in view of Yost because Petitioner’s assertion is supported by the evidence. Pet. 37–38 (citing Ex. 1008, 7:50–56; Ex. 1003 ¶ 80). Accordingly, we agree with Petitioner that the combination of Bhattacharya and Yost teaches that the average of the calibration data is “representative calibration data for an area.” See Pet. 37–38; Ex. 1003 ¶¶ 79–80; Pet. Reply 16; Ex. 1027 ¶ 46. Thus, we agree with Petitioner that the evidence of record supports that Bhattacharya and Yost teach generating sets of grid points for the calibration data, where the grid points are points associated with representative calibration data for an area.” slip op. at 40
Patent outcomesUS 8,406,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00032 · APJ Brian D Range · IPR · Final written decision
Claims 2–5, 9, 11, 12, 14–16, 18–22, 27, 29, 31, and 32 are unpatentable over the asserted anticipation and obviousness grounds; claims 1, 25, and 35 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The ’494 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:20–27; PO Resp. 45. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1005, code (57), ¶¶ 1, 13; PO Resp. 44–45. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1006, code (54), ¶¶ 1, 11; PO Resp. 45. We find that there is support in the ’494 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 9
- BurdenDecided for petitioner
“Patent Owner, however, has not identified any language in the Petition that explicitly incorporates by reference Dr. Sundaresan’s testimony. See generally PO Resp.; PO Sur-Reply. Nevertheless, to the extent that the Petition purportedly incorporates by reference Dr. Sundaresan’s testimony, we do not find such incorporation sufficiently extensive to merit disregarding the testimony. Typically, an incorporation by reference is deemed improper in instances in which large portions of a declaration are incorporated—particularly where the incorporation serves to circumvent a word-count limit. See, e.g., Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative). In this case, however, Dr. Sundaresan’s testimony describing the level of ordinary skill in the art is short. Ex. 1003 ¶ 8. The amount of testimony is not extensive and, thus, its purported incorporation into the Petition presents little or no imposition on Patent Owner or the Board.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In reply, Petitioner argues that “under any reasonable read of the Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 9 Dr. Sundaresan has a doctoral degree in electrical and computer engineering and has extensive experience in wireless communications. Ex. 1003 ¶¶ 75–78. Dr. Sundaresan also has experience with navigation and geolocation systems such as development of wireless tracking systems, as evidenced by his experience in companies such as NavigateIO Inc. Id. at ¶¶ 77–78. Patent Owner does not argue that Dr. Sundaresan fails to meet requirements for the level of qualifications of one of ordinary skill in the art under its proposed qualifications, which we adopt here. See generally PO Resp.; PO Sur-reply. Based on a review of his qualifications, we determine that Dr. Sundaresan qualifies as a person of ordinary skill at the time of the invention. ¶ 8). In his supplemental declaration, Dr. Sundaresan testifies: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision.” slip op. at 27
Patent outcomesUS 8,786,494 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,786,494
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.