- PTAB · Jul 24, 2025 · IPR2025-00190 · APJ Kimberly Mcgraw · IPR · Institution
Instituted IPR on all challenged claims and grounds after finding a reasonable likelihood that claim 5 would have been obvious over Dong.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may only institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). Based upon our review of the present record, Petitioner has sufficiently shown a reasonable likelihood it will prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review as to all challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had a had a bachelor’s degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) NAND memory devices (including issues relating to the operation, e.g., programming, of said devices), or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience). Pet. 22 (citing Ex. 1004 ¶¶ 40–42). Petitioner also asserts that a POSITA would have been aware of and generally knowledgeable about NAND memory’s structure and fabrication, its component parts, how it operates, and how it is controlled. Id. at 22–23 (citing Ex. 1004 ¶ 41). Patent Owner does not take a position on the level of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 12–13; see also Ex. 2006 ¶ 35 (applying Petitioner’s definition of a POSITA to the opinions set forth in the declaration but reserving the right to opine to an alternative level of a POSITA). For purposes of this Decision, we adopt Petitioner’s definition of a POSITA as it appears consistent with the level of ordinary skill in the art that is reflected by the prior art of record.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Because the preambles of independent claims 5 and 11 provide antecedent basis for the word line limitations recited in the body of their respective claim, we treat the preambles of claims 5 and 11 as limiting. See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1358 (Fed. Cir. 2012) (stating “a preamble phrase that provides antecedent basis for a claim limitation generally limits the scope of the claim”). The parties are invited to address whether the preamble is limiting if they so choose, to the extent permitted by our rules.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“one memory portion above or below another portion establishes a relative top and bottom. For example, claim 5 is directed to a “program method of memory” that requires a second portion formed above the first portion. A second memory portion that is formed above a first memory portion would be on top of the first portion. Given that the claims themselves identify relative vertical locations of the memory portions (i.e., second memory portion is above the first portion), it follows that claim terms referring to the top and bottom of word lines within the memory portions also refer to relative vertical locations of the word lines within the memory portions. Thus, we understand the plain and ordinary meaning of claim language referring to first and second memory portions that comprise word lines “from bottom to top” to mean that the word lines of the memory portions are arranged vertically from the bottom end of the memory portion toward the top of the memory portion (i.e., from bottom to top). Our understanding that the term “from bottom to top” refers to the vertical arrangement of word lines in the memory portions from bottom to top and not from source end to drain end is supported by the ’941 patent Specification, which does not refer to source or drain side of the word lines. See generally Ex. 1001. Rather, the ’941 patent illustrates and describes figures of memory devices having word lines arranged vertically from bottom to top. For example, Figures 1–11 each depict “a memory” having vertically arranged word lines. See id. at 2:37–55, Figs. 1–11. The Specification describes embodiments with first, second, and/or third memory portions as including various word lines “from bottom to top” and that the memory portions are formed above or below each other, thus supporting that the claim term “from bottom to top” is used according to its plain and ordinary meaning of from bottom to top and not from source side to drain side. See, e.g., id. at 1:45–50, 1:55–60, 2:1–7, 2:14–18, 2:64–3:3, 3:46–48.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,568,941 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- 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 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 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 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 8
- 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 explicitly 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 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we 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. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - 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 10, 2025 · IPR2025-00098 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 12–13, 16–18, 23–26, 28, 30, and 32 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Chae.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. Legal Standards “In an [inter partes review], the petitioner has the burden from the 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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). Anticipation “requires that every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). Anticipation also requires that a reference discloses “all of the limitations arranged or combined in the same way as recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 9
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“Even assuming, arguendo, that the “Chinese government” or YMTC Holding constitute an unnamed RPI, Patent Owner does not sufficiently show that the failure identify the RPI is a reason to decline to institute this proceeding. Patent Owner has not asserted that a statutory bar or other 7 Patent Owner refers to the “Chinese government” as an unnamed RPI but does not identify what the “Chinese government” is. See, e.g., Prelim. Resp. 3–5 (referring to “China’s State Council”), 6 (municipal governments), 7–8 (identifying the seven shareholders of YMTC Holding as “state-owned enterprises”), 8 (stating the actual controller of the Yangtze River Industrial Investment Group is the “administration of Wuhan East Lake High-tech Development Zone”), 8 (stating the actual controller of the Yangtze River Industrial Group is the “Hubei Provincial State-owned Assets Supervision and Administration Commission”). 8 More particularly, Patent Owner identifies YMTC’s parent as Yangtze Memory Technologies Holding Co., Ltd. (“YMTC Holding” or “YMTH”). Prelim. Resp. 7 (citing Ex. 2021 (“YMTC’s Corporate Disclosure Statement), 2). estoppel would apply to either the Chinese government or YMTC Holding in this proceeding. 35 U.S.C. § 315(b); SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (stating that a petition may be corrected, including adding a real party in interest, without assigning a new filing date); see also Paper 9 (granting Petitioner’s unopposed motion to amend its mandatory notices to add a subsidiary of YMTI as an RPI without changing the filing date). Indeed, in Unified Patents, LLC v. MemoryWeb, LLC, the Director instructed that the precedential SharkNinja decision held that it “best serves the Office’s interests in cost and efficiency to not resolve an RPI issue when it would not create a time bar or estoppel under 35 U.S.C. § 315 in that proceeding.” Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at 4 (PTAB May 22, 2023) (“Unified Patents”) (vacating the Board’s RPI determination in the Final Written Decision as not necessary to resolve the proceeding, such as a time bar under § 315(b) or estoppel under 35 U.S.C. § 315(e)). Here, as neither the Chinese government nor YMTC Holding have been sued for patent infringement, Patent Owner has not shown that a determination of whether the Chinese government or YMTC Holding are an RPI, or are in privity with Petitioner, would impact the underlying proceeding or result in a time bar or estoppel. As such, we do not address Patent Owner’s RPI argument. We have also considered Patent Owner’s contention that the Chinese government may file additional IPR proceedings through other Chinese semiconductor companies, such as Fujian Jinhua Integrated Circuit Co., Ltd., if this petition is denied or unsuccessful and that real party in interest provisions seek to protect patent owners from harassment via “successive petitions by the same or related parties.” Prelim. Resp. 25; see also Unified Patents¸ Paper 76 at 5 (noting Petitioner’s argument that a non-binding advisory opinion on RPI would prejudice the asserted RPI parties by prejudging the issue without their participation). Concerns that future petitions may be filed by parties that are the same or related to Petitioner may be addressed in any such future proceeding. See Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)9 (“Consolidated TPG”), 55–63; General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–18 (PTAB Sept. 6, 2017) (precedential) (recognizing the “potential for abuse of the review process by repeated attacks on patents” and setting forth factors to consider in exercising discretion on instituting inter partes review as to “follow-on” petitions challenging the same patent previously challenged in an inter partes review proceeding). As such, we do not deny institution for Petitioner’s alleged failure to list all RPIs.” slip op. at 19
- Other 314aInstitution denied discretionary otherDenied
“We are not persuaded by Patent Owner’s arguments. To date, the Director has not provided any guidance as to when a panel should deny institution based on foreign policy or national security implications, applicable to the facts presented here. To the contrary, the USPTO has expressly determined that Board panels, in considering discretionary denial sought in a Preliminary Response filed on or before March 26, 2025, may not consider such factors. FAQs for Interim Processes for PTAB Workload Management, FAQ 5, https://www.uspto.gov/patents/ptab/faqs/interim-processes-workload-management (stating, “The panel will not address any new factors outlined in the Process Memorandum”). Accordingly, we decline to exercise discretion to deny institution for this requested reason.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had a Bachelor’s degree in electrical engineering, materials science, or physics, or a closely related field, along with at least two years of experience in semiconductor fabrication and that a higher level of education might make up for less experience, and vice versa. Pet. 10 (citing Ex. 1003 ¶¶ 57–58). At this stage of the proceeding, Patent Owner neither responds to Petitioner's proposed definition, nor provides a definition of its own. See Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’996 patent, and we adopt it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,945,996 - PTAB · Jun 10, 2025 · IPR2025-00189 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR of claim 19 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing; it declined discretionary denial based on the parallel district court case.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“proceeding was temporarily stayed pending consideration of Petitioner’s motion for a stay in light of the filed inter partes review proceedings. Prelim. Resp. 32 (citing Ex. 2001; Ex. 2003). Subsequently, Patent Owner notified the Board that the parallel proceeding “was stayed pending resolution of related IPR proceedings.” Paper 10, 1; see also Ex. 3001 (district court order granting motion to stay case). Accordingly, we determine that Fintiv factor 1 weighs strongly against exercising our authority to deny institution. See Snap, Inc. v. SRK Technology, Inc., IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential) (“The granting of a stay pending inter partes review has weighed strongly against exercising discretion to deny institution under NHK.”).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have had a bachelor’s degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) 3D memory devices, or an equivalent level of skill, knowledge and experience (e.g., an advanced degree may substitute for professional experience).” Pet. 24–25 (citing Ex. 1003 ¶¶ 34–37). Petitioner further contends that the “POSITA would also have been aware of and generally knowledgeable about 3D memory’s structure, its component parts, and how it operates.” Id. at 25 (citing Ex. 1003 ¶¶ 34–37). Patent Owner “takes no position on the level of ordinary skill in the art” as this stage of the proceeding. Prelim. Resp. 6. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’666 patent, and we adopt it” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each 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). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 13
- 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 . . . 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; see also 37 C.F.R. § 42.4. For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of claim 19. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314. Accordingly, we institute an inter partes review of claim 19 of the ’666 patent.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,145,666 - PTAB · Jun 10, 2025 · IPR2025-00118 · APJ Jo-Anne M Kokoski · IPR · Institution
Instituted review of claims 1–14 on all asserted obviousness grounds based on Yoshinaga, Saint, and Haralabidis.
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 . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’164 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of claims 1–14 of the ’164 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage of the proceeding, Petitioner, with supporting testimony from Dr. Foty, provides adequate reasons why using the pads immediately next to the saved areas in Yoshinaga’s Figure 6 as reference pads would have been a “predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007); see Pet. 30–34 (and evidence cited therein). We acknowledge that Patent Owner disagrees, but find that Patent Owner’s disagreement raises issues of fact that are best resolved on a full trial record.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(district court order granting motion to stay case). Accordingly, we determine that Fintiv factor 1 weighs strongly against exercising our authority to deny institution. See Snap, Inc. v. SRK Technology, Inc., IPR2020-00820, Paper 15 at 9 (PTAB Oct. 21, 2020) (precedential) (“The granting of a stay pending inter partes review has weighed strongly against exercising discretion to deny institution under NHK.”)” slip op. at 36
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“§ 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,879,164 - PTAB · Jun 4, 2025 · IPR2025-00117 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood of success on the asserted obviousness grounds and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’711 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of claims 1–19 of the ’711 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶ 42). Petitioner further asserts that a POSITA “would have been aware of” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim construction at this stage of the proceeding. Pet. 26; Prelim. Resp. 8. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner’s assertions as to claim 1. Patent Owner contests Petitioner’s assertion that Kim in view of the knowledge of the prior art teaches “wherein each step comprises a gate stack disposed over a dielectric layer,” Prelim. Resp. 9. We first focus on this disputed limitation.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,672,711 - 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 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). 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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967
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.