• Google LLC v. Sandpiper CDN, LLCAll claims unpatentable
  PTAB · Oct 9, 2026 · IPR2025-00826 · APJ Michael T Cygan · IPR · Final written decision

  Claims 1–23 are unpatentable under § 103, including over Glines alone and the additional asserted combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner provides substantially the same assessment. PO Resp. 16. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction. Pet. 3; PO Resp. 16. We address the parties’ interpretation of the scope of “causing said hostname to be resolved” in our discussion of Petitioner’s assertions for limitation [1.d]. Based on the record before us, we determine that no claim term requires express construction.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Strike new argumentNew argument consideredDecided for petitioner

    “We do not agree. The Petition states that Glines discloses that the anycast is resolved by an ISP DNS server. Pet. 20. The Petition identifies Glines’s local ISP DNS resolver 18 as the claimed ISP DNS server. Id. The Petitioner further asserts that Glines’s ISP DNS resolver 18 sends the request to the DNS server 38, but states that “Glines’s local DNS resolver, an ISP DNS server, thus causes the hostname . . . to be resolved.” Id. at 21–22. The Petition also drew an analogy with the ’112 patent and the role of local DNS server 70a in the Petition. See Pet. 20–21. Because the Petition and the Reply both identify Glines’s local ISP DNS resolver 18 as causing the hostname to be resolved, Petitioner has not advanced a new theory of unpatentability in its Reply. 6 At oral argument, Patent Owner suggested a narrower claim reading, but admitted that this had not been briefed. Tr. 36:15–38:9, 44:9–16. We do not address this reading because it was not set forth in the briefing. In the briefing, Patent Owner took the broader reading discussed here. See Tr. 41:12–23; PO Sur-reply 7.” slip op. at 13

  Patent outcomesUS 9,021,112 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,021,112
• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentable
  PTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner

    “We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29

  Patent outcomesUS 11,886,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,886,774
• Posco Co., Ltd. v. ArcelormittalAll claims unpatentable
  PTAB · Jul 16, 2026 · IPR2025-00371 · APJ Brian D Range · IPR · Final written decision

  Claims 1–25 are unpatentable as obvious under § 103 over the asserted combinations of Takagi, Cornette, Suehiro, GMW14400, Laurent, and Vaissiere.

  RulingsFinal written decision

  • 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). Patent Owner does not challenge Petitioner’s definition of a POSITA for this proceeding. PO Resp. 8. Because the parties agree and because Petitioner’s proposal is reasonable and consistent with the ’227 patent specification and the prior art, we adopt Petitioner’s proposal. 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 › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “1. superficial layer The only independent claim at issue, claim 1, recites a “Superficial layer.” Ex. 1001, 15:6. Patent Owner argues that, based on plain and ordinary meaning, the term “superficial layer” refers to a “surface layer” or “top layer.” PO Resp. 8–9. Petitioner does not dispute this construction. See Pet. Reply 21–22 (arguing that the relevant layer of the Suehiro reference is a superficial layer because it is outermost and present at the surface). Because the parties are in agreement and because that agreement is consistent with plain language, claim language, and the ’227 specification, we construe “superficial layer” as referring to a surface layer or top layer.” slip op. at 10

  • Claim Construction › Extrinsic evidence (dictionaries, experts)Term construed petitioner constructionDecided for petitioner

    “defined stoichiometry” (Ex. 2037, 527) but the word may also be a “generic term for phases . . . which may have a narrow or extended compositional stability range” (id.). The first glossary meaning is consistent with Patent Owner’s position. The second, broader, glossary meaning is consistent with Petitioner’s position. Some of the extrinsic sources before us support the broad definition, and some support the narrow definition. See PO Sur-Reply 3–4 (arguing that Dr. Miles admitted that various treatises distinguish intermetallic compounds from alloys and solid solutions). Thus, neither Dr. Miles or Dr. Raabe is “wrong scientifically” in how they use the term “intermetallic” in this proceeding. Id. at 2 (noting that Dr. Miles agreed that Dr. Raabe’s construction is not wrong scientifically). As explained below, however, only one of these meanings is appropriate here. To decide which possible meaning applies to the ’227 patent, we focus on the patent claims and specification. Claim 1 indicates that the intermetallic layer has a “mean composition” (emphasis added). Ex. 1001, 15:1–10. This indicates, albeit weakly, that iron composition across the layer may vary rather than having ordered stoichiometry—consistent with Petitioner’s position. The specification also indicates that “intermetallic alloying” is a possibility—again, consistent with Petitioner’s position. Ex. 1001, 2:47–50. Meanwhile, nothing in the ’227 specification explicitly (or implicitly) suggests that “intermetallic layer” must be limited to elements atomically joined with defined stoichiometry in an ordered crystal structure. We also find that Dr. Miles’s testimony regarding the meaning of “intermetallic” is more credible than Dr. Rabbe’s testimony. Dr. Rabbe, in deposition, stated that Figure 2 of the challenged patent “does not show a layer that meets [his] construction of intermetallic.” Ex. 1078, 129:21–24. The ’227 patent, however, states that Figure 2 includes an “Al-rich Intermetallic layer.” Ex. 1001, Fig. 2, 3:60–64 (“FIG 2. Illustrates a coating … which does not correspond to the invention. This succession of layers (interdiffusion layer and intermetallic layer) yields inferior results in resistance spot welding.”). Also, Dr. Raabe previously referred to a layer of Takagi as having “intermetallic phase layering and structure.” Pet. Reply 4 (citing Ex. 1076 ¶ 166; Ex ¶ 1075, 17) (emphasis omitted). Thus, Dr. Raabe’s construction of “intermetallic” for this proceeding does not fully account for the ’227 patent usage of the word “intermetallic” and does not fully account for Dr. Raabe’s prior usage of the word “intermetallic.” Patent Owner argues that Petitioner’s construction “erases the meaningful distinction” between the claimed layers. PO Resp. 11. Patent Owner further argues that Petitioner’s construction renders the word “intermetallic” superfluous because allowing the intermetallic layer to be “merely a multi-element alloy erases the meaningful distinction among these layers.” Id. We disagree. The word intermetallic serves to require that the layer be composed of two or more metals or a metal and a metalloid. The word intermetallic also serves as a label to differentiate each of the four claimed layers. For example, in claim 1, the word “intermetallic” is used much like the words “interdiffusion” and “intermediate” to give each of the four layers (each having differently mean compositions) different labels.” slip op. at 16

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Because IHS was a company that created an online database with the purpose of providing (selling) standards including General Motors standards to the public, we determine that a person of ordinary skill in the art would have known to look to this database and would have been able to find GMW14400. Patent Owner presents no evidence to the contrary. Because a preponderance of the evidence supports Petitioner, we determine Petitioner establishes GMW14400 is qualifies as prior art.” slip op. at 21

  Patent outcomesUS 11,326,227 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,326,227
• Posco Co., Ltd. v. ArcelormittalAll claims unpatentable
  PTAB · Jul 16, 2026 · IPR2025-00370 · APJ Brian D Range · IPR · Final written decision

  Claims 1–30 are unpatentable as obvious under § 103 over the asserted combinations of prior art.

  RulingsFinal written decision

  • 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 ¶¶ 13–16). Patent Owner does not challenge Petitioner’s definition of a POSITA for this proceeding. PO Resp. 8. Because the parties agree and because Petitioner’s proposal is reasonable and consistent with the ’602 patent specification and the prior art, we adopt Petitioner’s proposal. 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 neededDecided for patent owner

    “1. superficial layer All independent claims at issue, claims 1, 21, and 24, recite a “superficial layer.” Ex. 1001, 15:11, 16:60, 17:21. Patent Owner argues that, based on plain and ordinary meaning, the term “superficial layer” refers to a “surface layer” or “top layer.” PO Resp. 8–9. Petitioner does not dispute this construction. See Pet. Reply 21–22 (arguing that the relevant layer of the Suehiro reference is a superficial layer because it is outermost and present at the surface). Because the parties are in agreement and because that agreement is consistent with plain language, claim language, and the ’602 specification, we construe “superficial layer” as referring to a surface layer or top layer.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “defined stoichiometry” (Ex. 2037, 527) but the word may also be a “generic term for phases . . . which may have a narrow or extended compositional stability range” (id.). The first glossary meaning is consistent with Patent Owner’s position. The second, broader, glossary meaning is consistent with Petitioner’s position. Some of the sources before us support the broad definition, and some support the narrow definition. See PO Sur-Reply 3–4 (arguing that Dr. Miles admitted that various treatises distinguish intermetallic compounds from alloys and solid solutions) Thus, neither Dr. Miles or Dr. Raabe is “wrong scientifically” in how they use the term “intermetallic” in this proceeding. Id. at 2 (noting that Dr. Miles agreed that Dr. Raabe’s construction is not wrong scientifically). As explained below, however, only one of these meanings is appropriate here. To decide which possible meaning applies to the ’602 patent, we focus on the patent claims and specification. The claims indicate that the intermetallic layer has a “mean iron composition” (emphasis added). Ex. 1001, 15:6–10. This indicates, albeit weakly, that the iron composition across the layer may vary rather than having ordered stoichiometry— consistent with Petitioner’s position. The specification also indicates that “intermetallic alloying” is a possibility—again, consistent with Petitioner’s position. Id. at 2:50–54. Meanwhile, nothing in the ’602 specification explicitly (or implicitly) suggests that “intermetallic layer” must be limited to elements atomically joined with defined stoichiometry in an ordered crystal structure. We also find that Dr. Miles’s testimony regarding the meaning of “intermetallic” is more credible than Dr. Raabe’s testimony. Dr. Raabe, in deposition, stated that Figure 2 of the challenged patent “does not show a layer that meets [his] construction of intermetallic.” Ex. 1078, 129:21–24. The ’602 patent, however, states that Figure 2 includes an “Al-rich Intermetallic layer.” Ex. 1001, Fig. 2, 3:57–61 (“FIG 2. Illustrates a coating . . . which does not correspond to the invention. This succession of layers (interdiffusion layer and intermetallic layer) yields inferior results in resistance spot welding.”). Also, Dr. Raabe previously referred to a layer of Takagi as having “intermetallic phase layering and structure.” Pet. Reply 4 (citing Ex. 1076, 166; Ex. 1075, 17) (emphasis omitted). Thus, Dr. Raabe’s definition of “intermetallic” does not fully account for the ’602 patent usage of the word “intermetallic” and does not fully account for Dr. Raabe’s prior usage of the word “intermetallic.” Patent Owner argues that Petitioner’s construction “erases the meaningful distinction” between the claimed layers. PO Resp. 11. Patent Owner further argues that Petitioner’s construction renders the word “intermetallic” superfluous because allowing the intermetallic layer to be “merely a multi-element alloy erases the meaningful distinction among these layers.” Id. We disagree. The word intermetallic serves to require that the layer be composed of two or more metals or a metal and a metalloid. The word intermetallic also serves as a label to differentiate each of the four claimed layers. For example, in claim 1, the word “intermetallic” is used much like the words “interdiffusion” and “intermediate” to give each of the four layers (each having differently defined mean iron compositions) different labels.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 28– 42; Ex. 1016 ¶ 35; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13). In particular, Petitioner argues that Takagi discloses a pre-coating thickness of 10–20 µm but does not explicitly disclose a post hot-stamping coating thickness corresponding to the pre-coating thickness. Pet. 11. Cornette teaches that the hot-stamping thickness causes coating expansion from 25 µm to about 40 µm, an increase of 60%. Id. (citations omitted). Petitioner and Dr. Miles reason that, when hot stamping Takagi’s product, the thickness would be 32 µm. Id. (citing Ex. 1003 ¶ 32); see also Pet. Reply 20–21. Thus, Patent Owner argues that Cornette evidences Takagi’s finally coating thickness without requiring modification of Takagi. Petitioner further argues that Takagi and Cornette teach that post hot- stamping thickness could be varied and optimized as a result effective variable. Id. at 12–13; see also Pet. Reply 17–18. Cornette teaches, for example, that “[t]he average [pre-coating] layer thickness showing the best compromise between corrosion protection and weldability is 25 µm” and links this pre-coating thickness to a final thickness of “about 40 µm at the steel surface.” Ex. 1014, 9. Petitioner also argues that it would have been obvious to fill in other details of Takagi including, for example, selecting USIBOR 1500 steel, based on the teachings of Cornette. Pet. 14. Patent Owner argues that there is no reason to combine Takagi with the teachings of Cornette. PO Resp. 26. Patent Owner makes seven related arguments. Patent Owner first argues that the Petitioner’s position is speculative and lacks basis. Id. at 26–27. We disagree. Cornette evidences a final coating thickness for Takagi, and the references also suggest that final coating thickness is result effective. Second, Patent Owner argues that there would have been no incentive to seek a motivation to seek a thicker coating post-hot stamping. Id. at 28– 35. This argument does not undermine Petitioner’s position that Takagi, by itself, would have reached a thicker coating after stamping as evidenced by Cornette. Pet. 11–12. Petitioner takes the position, with evidence, that practice of Takagi alone would reach the recited thickness. No motivation to modify Takagi is required under this position.” slip op. at 25

  Patent outcomesUS 10,961,602 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,961,602
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Apr 29, 2026 · IPR2024-01493 · APJ John D Hamann · IPR · Final written decision

  Claims 1, 3, 5, 7–11, 14, and 15 are unpatentable as obvious; claims 2, 4, 6, 12, and 13 were not shown unpatentable because the references did not establish entirely crystallized CoFeB layers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’167 patent. Dec. on Inst. 6. Namely, we found that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Id. (citing Pet. 20 (citing Ex. 1024 ¶ 25)). We also found that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not address Petitioner’s definition, nor provide its own. See generally PO Resp. Because Petitioner’s definition of the level of skill in the art is consistent with the ’167 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “Here, neither party sets forth any term for claim construction. Pet. 17; see generally PO Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “In addition, we agree with Petitioner and find that one of ordinary skill in the art “would have been motivated to replace either or both of Bowen’s electrodes with CoFeB to increase TMR and lower Hf [(coupling field)] and Hc [(coercivity)].” Pet. 24, 27; Ex. 1055,30 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105631 ¶¶ 67–68 (“[B]oth the ferromagnetic layers 5, 7 are made of an FeCoB”32 for “improvement of the TMR ratio.”); Ex. 1024 ¶¶ 129, 132. We credit Dr. Bokor’s cited testimony as it is consistent with the cited evidence. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 30 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 31 US 2004/0136232 A1, published July 15, 2004, to Hosomi. 32 We find persuasive Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. 36–44) (emphasis omitted). In addition, we agree with Petitioner that one of ordinary skill in the art “would have found it obvious to use Parkin’s CoFeB layer in place of Bowen’s electrodes to increase TMR” in light of Parkin’s explicit teachings. Pet. 27; Ex. 1024 ¶ 133. In particular, Parkin explicitly teaches that “very high TMR values are unexpectedly found for MTJs with highly textured (100) MgO tunnel barriers but with nominally amorphous storage layers.” Ex. 1062, 18:49–51. Notably, Parkin provides that “[t]he TMR of the device of F[igure] 3A is nearly two times higher than the highest TMR ever reported in prior art devices using conventional alumina tunnel barriers.” Id. at 18:63–65; Pet. 27. And as we discuss above, Parkin teaches that Figure 3A’s MTJ may be inverted, such that the storage layer is formed beneath the tunnel barrier. Ex. 1062, 17:7–10. In addition, we agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen in the manner Petitioner proposes, as forming electrodes with CoFeB alloys was known. Pet. 28. As Petitioner argues, “forming electrodes with CoFeB alloys in MTJs was known and had been successfully done,” and thus we are persuaded that “one of skill would have found it to be a straightforward, predictable, and desirable improvement to TMR, Hf, and Hc in Bowen’s” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “We find unavailing Patent Owner’s arguments that Bowen teaches a “radically different manufacturing process[] from the claimed invention,” and that Bowen “went to heroic lengths to provide a crystalline (001) bottom electrode that provides a template for epitaxially growing a crystalline MgO(001) layer.” PO Resp. 2 (emphasis omitted). Patent Owner describes in detail Bowen’s specific manufacturing process, including the specific structure of the MTJ manufactured, and argues the claimed invention differs. PO Resp. 30–33. These arguments are inapposite. Petitioner cites the specific teachings Petitioner relies on from Bowen, rather than adopting the entirety of Bowen’s process or MTJ. See, e.g., Pet. 21–36 (citing the portions of Bowen—that in combination with Parkin—teach claim 1). Petitioner is not “compelled to adopt every single aspect of [Bowen’s] teaching without the exercise of independent judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). We also find unavailing Patent Owner’s argument that Bowen and Parkin each teach away from Petitioner’s combination because Parkin used boron to avoid crystalline electrodes whereas Bowen tried to achieve perfect crystalline electrodes. PO Resp. 4. As we discuss above, one of ordinary skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB to increase TMR. And Patent Owner does not identify in either reference a specific teaching that criticizes, discredits, or otherwise 35 M. Jimbo et al., Thermal stability of spin valves using amorphous CoFeB, 165 J. Magnetism & Magnetic Materials 308–11 (1997) (“Jimbo”). combination. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).” slip op. at 23

  Patent outcomesUS 10,680,167 mixed
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,680,167
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] 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). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Some claims unpatentable
  PTAB · Mar 27, 2026 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Final written decision

  Claims 1–2 are unpatentable as obvious over each Bowen-based combination; claims 3–4 were not shown unpatentable, and the Nagahama-based grounds failed for all claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Consistent with the Institution Decision (Dec. 7), we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art. Patent Owner does not dispute that Dr. Bokor is qualified as a person of ordinary skill in the art in accordance with the assessment adopted. See Tr. 90:9–15. Patent Owner, however, questions Dr. Bokor’s knowledge on the formation of crystalline materials and seeks to exclude his related testimony. See PO Resp. 1–2, 27; PO Mot. Excl. 12–15. We address this issue infra Section V.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner “submits the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 24. Patent Owner does not raise any claim construction issues in its Response. See generally PO Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Strike new argumentNew argument consideredDenied

    “A reply may only respond to arguments raised” in the patent owner response. 37 C.F.R § 42.23(b). The Consolidated Trial Practice Guide states that responding “does not mean proceed[ing] in a new direction with a new approach,” and “[w]hile replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered,” that is, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Consolidated Trial Practice Guide § II.I (last updated Dec. 12, 2025) (“CTPG”), available at https://www.uspto.gov/patents/ptab/trial-practice-guide. We are not persuaded by Patent Owner’s assertions that Petitioner’s reply arguments on Parkin should not be considered. As discussed supra Section II.D.3.i above, the Petition includes the assertion that if Parkin’s CoFeB electrodes were used to modify Bowen, the MgO polycrystalline or single-crystal layer would still have the same 001 orientation. Pet. 33–34 (citing Ex. 1024 ¶ 129; Ex. 1062, 9:58–10:2, 18:49–51; Ex. 1005, 4:30–32). Petitioner’s support in the Petition references disclosures relating to Parkin’s Figure 3A (Ex. 1062, 18:49–51), which discloses a MgO(100) tunnel barrier, and the Petition also notes that the structure of Figure 3A may be inverted. Pet. 40 (citing Ex. 1062, 17:7–10). Patent Owner’s arguments, in large part, are related to Petitioner’s arguments in the Reply relating to Parkin’s Figure 11. Parkin’s Figure 11 is an embodiment where the structure of the devices of Figure 3A is inverted. See Ex. 1062, 22:29–33. We do not find that Petitioner’s arguments that are at issue in the Reply represent a new direction in its approach—the Petition is clearly based on the assertion that if Parkin’s CoFeB electrodes are used in Bowen, the device would have a MgO(001) tunnel barrier layer. Further, the Petition refers to Parkin’s disclosure that the device in Figure 3A may be inverted, which would be encompassed by the Figure 11 embodiment. Moreover, in the Institution Decision, we invited additional briefing on whether Parkin’s storage magnetic electrode was an amorphous ferromagnetic electrode, which relates to Parkin’s Figure 11 (Dec. 28–29). We are also not persuaded by Patent Owner’s argument that the Petition’s assertions do not correspond to what Petitioner argues in the Reply because they were referred to in the section pertaining to limitation 1[e]. The Petition includes a cross-reference in the limitation 1[d] discussion on the tunnel barrier layer limitation: “if Sunai’s or Parkin’s CoFeB electrodes are used as described in Claims 1[e] and 2 in this Ground, one of skill would understand that the MgO . . . would still have the same (001) orientation.” Pet. 33. Further, Petitioner’s arguments in its Reply properly respond to arguments made on contested issues. Patent Owner’s contentions on the merits in its Response are largely based upon the assertion that the modified MTJ of Bowen would not have a MgO(001) layer as claimed. See PO Resp. 4–10, 18–48. Petitioner’s reply arguments on Parkin relate to whether there would be a MgO(001) layer in its structure, so we find that Petitioner’s arguments on Parkin in its Reply (Pet. Reply 2–5) and the related evidence are appropriately responsive. slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that there is sufficient evidence in support of Petitioner’s assertion of the rationale to replace Bowen’s electrodes with CoFeB and anneal them. As discussed supra Section II.D.ii.2, Parkin’s Figure 11 depicts and describes a storage electrode that may be composed of amorphous CoFeB, with the formation of a MgO(001) barrier layer atop it. See Ex. 1062, 22:29–66. Patent Owner argues that Parkin’s benefits are because its CoFeB electrode is amorphous (PO Resp. 51–52), but this is not accurate. In Parkin, the CoFeB amorphous electrode crystallized at the interface layer between the barrier and the electrode. Id. at 19:6–19. Parkin discloses that higher TMRs were attributable to the crystallization of CoFeB. Id. at 18:63–19:22. Parkin also discloses that its completed CoFeB- MgOH(001)-CoFeB device was annealed with resulting high TMRs. Id. at 17:60–18:16. These disclosures provide support that one of skill in the art would have been motivated to replace Bowen’s electrodes with CoFeB and anneal to crystallize them because of the known improvements of TMR. Additionally, Parkin’s disclosures support that the results of the combination would have been predictable. That is, Parkin actually discloses an amorphous CoFeB electrode, formation of a MgO(001) tunnel barrier on the amorphous electrode, and annealing the assembly, with a resulting high TMR. Accordingly, Petitioner has provided reasoning with rationale underpinning for the motivation to combine. See KSR, 550 U.S. at 415 (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).” slip op. at 31

  Patent outcomesUS 8,405,134 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,405,134
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01266 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 29, 36–38, 44–46, 48, 49, and 56–58 unpatentable as obvious over Reime, with additional grounds also supporting the challenged claims.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 32) and Petitioner filed an Opposition (Paper 33). We denied this motion. See Final Dec. 58–61.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “transmission paths. See Pet. Reply 14–15; PO Sur-reply 15. And we agree with both parties that the light that is transmitted directly through the plate to the sensor element does not have intervening reflections—such is consistent with the plain and ordinary meaning of “directly to.” See PO Resp. 31–32; Pet. Reply 14–15; PO Sur-reply 15. Nothing in claim 48’s language, however, requires that all of the reflected light be transmitted directly to the sensor element, which Patent Owner argues. Ex. 1001, 70:32–35; PO Resp. 31–32; PO Sur-reply 14–16. Rather, we agree with Petitioner that the claim language “merely requires that some light reflected by the object goes ‘directly to’ at least one sensor element once it is transmitted through the viewing plane defining plate.” Pet. Reply 14. We also agree that “none of these dependent claims purport to be exclusive of one another.” Id. at 15. Rather, claims 46–48 simply require some light be transmitted (or propagated) for their particular transmission path, without reciting all light. See Ex. 1001, 70:24–35.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We find Petitioner’s arguments based on Reime alone insufficient. Thus, we find that Petitioner does not show by a preponderance of the evidence that claim 49 is rendered obvious by Reime alone.” slip op. at 52

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “And in view of the above, we find persuasive Dr. Bederson’s testimony that “[c]hoosing a multi-element detector or a single-element detector would have been a simple design choice using commercially available detectors.” Ex. 1002 ¶ 117. Accordingly, we find that one of ordinary skill in the art would have found it obvious for Reime’s receivers to be implemented using discrete single-element detectors. See KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We find unavailing Patent Owner’s argument that “Petitioner relies on expert testimony to gap-fill missing elements regarding Reime’s failure to disclose or suggest the different claim arrangements of detector elements in a ‘detector assembly.’” PO Resp. 78 (citing Ex. 1002 ¶¶ 111–119; Ex. 2056 ¶ 171). Rather, in light of Reime’s teachings, coupled with the general knowledge of one of ordinary skill in the art, it would have been obvious to employ discrete single-element detectors for Reime’s receivers. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony to supply an element of a claim). We appropriately consider such evidence of the knowledge that one of ordinary skill in the art would have had as part of our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). Moreover, “AAPA can be important evidence of general background knowledge, and general knowledge can be used to supply a missing claim 1371, 1378–79 (Fed. Cir. 2025). Here, Petitioner relies on the cited AAPA as evidence of one of ordinary skill in the art’s general knowledge at the time of the ’093 patent, and the AAPA is not the basis for this ground. See Pet. 4, 42–43; Pet. Remand 4–5. As Shockwave Med. explains, Federal Circuit “case law has long recognized numerous permissible uses for general background knowledge in an IPR such as, ‘for example, furnishing a motivation to combine, or supplying a missing claim limitation.” 142 F.4th at 1378–79 (quoting Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; Koninklijke, 948 F.3d at 1337–38)).” slip op. at 31

  Patent outcomesUS 9,569,093 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850

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.