• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01405 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1–20 over Torii, claims 1–3, 9, 11–13, and 19 over Ide, and claims 1–7, 10–17, and 20 over Gambino with Conn, with Ding for claims 10 and 20.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “of the substrate is based on Dr. Thompson’s testimony. In his first declaration, Dr. Thompson relies on Conn’s paragraphs 31 and 35 to support the annotated version of Figure 2 in the Petition. Ex. 1003 ¶¶ 83–84. As discussed above, paragraphs 31 and 35 do not disclose that the anchor vias 14 are located in the corner of the substrate. The second annotated Figure 2 shown in Petitioner’s Reply does not appear in either of Dr. Thompson’s declarations (See Ex. 1003, Ex. 1034). It appears to be mere attorney argument not evidence. Dr. Thompson testified in his deposition that the second annotated version is based on his interpretation of Conn. Ex. 2009, 45:2–46:9. Because Dr. Thompson’s testimony is not adequately supported by the disclosure of Conn, we find that his testimony on the point of whether Conn discloses anchor vias located in the corner of the substrate is entitled to little, if any, weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Therefore, because Petitioner has the burden of proof, we find that Petitioner has not shown that Conn discloses this limitation.” slip op. at 27

  • ExcludeMotion to exclude, deniedDenied

    “J. Petitioner’s Motion to Exclude Petitioner moves to exclude Exhibits 2007 and 2008. MTE, 1. Petitioner argues that the Exhibits are in violation of FRE 401, 402, 403, and 901. Id. We do not rely on either Exhibit 2007 or 2008 in this Decision. Consequently, we deny Petitioner’s MTE as moot.” slip op. at 72

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We agree with Petitioner that the differences between the parties’ proposed levels of skill in the art are immaterial for the purposes of this Decision. We apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’826 patent and the prior art. Further, our determination in this case would not be affected if we were to adopt Patent Owner’s proposed level of skill in the art.” slip op. at 11

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

    “Claim 1 uses the term “comprising” which is open-ended and normally does not exclude additional, unrecited elements. See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). This is in contrast to the phrase “consisting of.” See Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016) (there is an “exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements.”). The use of comprising in claim 1, thus, weighs against a construction limiting claim 1 to direct contact between the backside metal layer and the bottom surface of the semiconductor substrate. Additionally, we note that claim 1 does not recite that the backside metal layer is “directly on” or “formed on” the bottom surface or similar language that would suggest “direct contact” may be required. For these reasons, we determine that the language of claim 1 does not support Patent Owner’s proposed construction.” slip op. at 17

  Patent outcomesUS 9,245,826 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,245,826
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Mar 11, 2026 · IPR2024-01404 · APJ Hyun J Jung · IPR · Final written decision

  Claims 1–18 are unpatentable: claims 1–6, 9–14, 17, and 18 as anticipated by Cooney and obvious over Cooney; claims 7 and 15 over Cooney and Dean; claims 8 and 16 over Cooney and Farooq or …

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the full record, we maintain and affirm that a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems” and that “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 9–10 (citing Ex. 1002 ¶¶ 72–74). We agree with the parties that any differences in the parties’ proposed level of ordinary skill would not affect our analysis. Pet. Reply 1; Tr. 25:4–9 (Patent Owner’s counsel agreeing that any differences in the parties’ proposed level of ordinary skill in the art are immaterial). We also find that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’609 patent and the asserted prior art.” slip op. at 9

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

    “Based on the full record and because Petitioner’s anticipation challenge is based on giving these recitations no patentable weight and Petitioner’s obviousness challenge is based on the same recitations having patentable weight, we determine that resolving whether to give patentable weight to the recitations “to reduce thermal stress in said semiconductor substrate,” “to provide space for said conductive filler to expand inward,” and “to prevent contamination during processing of said semiconductor substrate” is not necessary to resolve the parties’ dispute. 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. full record, we also determine that express claim interpretation of any other claim term is not necessary. Id.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 7

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

    “find that Cooney discloses “silicon vias having a hollow center.” Ex. 1002 ¶¶ 120–123; Ex. 1004 ¶¶ 55, 60, Fig. 6. We also find that the portions of Pogge cited by Petitioner show that its “void 25 has an important function in relieving stresses caused by differences in the thermal coefficient of expansion (TCE) of the various materials in and around the feature” (Ex. 1005 ¶ 27) and that the portions of Edelstein cited by Petitioner show that, “[a]lthough it does not change the thermal expansion coefficient, the introduction of a void or voids reduces the effective modulus and Poisson ratio of the through-via, resulting in a compliant through-via that exerts much less stress and force on the surrounding structures” (Ex. 1006 ¶ 47). As discussed above, we find that Cooney’s void 25 is “entirely surrounded by” its conductive filler 24 that, in turn, is surrounded by liner 22 and substrate 10’. Ex. 1004, Fig. 6. We credit Petitioner’s relied-upon testimonial evidence that the presence of a void was known to reduce thermal stress in the surrounding substrate, because the citations to the record support it. Ex. 1002 ¶¶ 124–134; Ex. 1005 ¶¶ 1, 9, 25–28, Fig. 2D; that “a void can decrease thermal stress in the substrate”). We agree with Petitioner’s declarant that Pogge provides a void in a TSV similar to Cooney and the ’609 patent. Ex. 1001, Fig. 4; Ex. 1002 ¶ 127; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2D. We, thus, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Pogge would have been manifested in Cooney’s void. Ex. 1002 ¶ 127. We also agree with Petitioner’s declarant that Edelstein includes a void in a TSV similar to Cooney, the ’609 patent, and Pogge. Ex. 1001, Fig. 4; Ex. 1002 ¶ 130; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2F; Ex. 1006, Fig. 6F. We, therefore, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Edelstein would have also been manifested in Cooney’s void. Ex. 1002 ¶ 130.” slip op. at 33

  Patent outcomesUS 9,147,609 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,147,609
• Lenovo (United States) Inc. v. Intellectual Ventures, II LLCAll claims unpatentable
  PTAB · Feb 18, 2026 · IPR2024-00124 · APJ John D Hamann · IPR · Final written decision

  Claims 1–4, 6, 7, 10–14, and 16 are unpatentable as obvious over the Neufeld grounds; the Board found the IPMI and Lawrence grounds insufficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. 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 ’140 patent. Dec. on Inst. 7–8. Namely, we found that one of ordinary skill in the art “would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience in the field of computer and/or” slip op. at 7

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

    “same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be 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, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). in claim 1 means “said managed network device.” Pet. 9. Patent Owner does not dispute this construction. We adopt Petitioner’s proposed construction for this term as it appears to be consistent with the Specification’s use of “element” as referring to networked devices, and with the overall claim. See generally Ex. 1002.” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesDecided for petitioner

    “First, Petitioner argues that “an out of band access connection means” is a means-plus-function term with the recited function being “connecting said one or more network services or remote users with said secure management access controller for management of said network device.” Id. at 10. Petitioner argues that the function’s corresponding structure is “one or more of the following networks: a Public Switched Telephone Network (PSTN) (2:45–57, 3:2–4, 12:37-61), an Integrated Services Digital Network (ISDN) (2:45–57), a cellular network (6:14–21, 7:60–62, 12:37–61), an Ethernet network (12:37–61), a wireless network, and/or a Digital Subscriber Line (DSL) (12:37–61, 15:55–60), where the one or more networks use one or more of the following protocols: [Simple Network Management Protocol (“SNMP”)], TFTP, FTP, DNS, SysLog, Telnet, SSH, HTTP, HTTPs, point to point IP, and/or XML (8:30–38).” Id. Second, Petitioner argues that “virtual management interface connection means” is a means-plus-function term with the following recited with said secure management access controller’; (ii) ‘provides logical separation of management data from user data,’ and (iii) ‘utilizes user interfaces of said managed network element for connecting said one or more network services or remote users with said secure management access controller.’” Id. at 10–11. Petitioner argues that the functions’ corresponding structure is a VPN. Id. at 11 (citing Ex. 1002, 6:22–44, 6:63– 7:5, 12:5–21).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Lastly, we determine that we do not need to construe any other terms to resolve the disputes between the parties. 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 and only to the extent necessary to resolve the controversy.’”).” slip op. at 11

  Patent outcomesUS 7,325,140 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,325,140
• Lenovo (United States) Inc. v. Intellectual Ventures, II LLCAll claims unpatentable
  PTAB · Feb 18, 2026 · IPR2024-00109 · APJ John D Hamann · IPR · Final written decision

  Claims 1–3, 6–9, 12, and 14–17 are unpatentable as obvious over grounds involving Neufeld; the Board found the grounds involving IPMI and Huckins insufficient.

  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 ’016 patent. Dec. on Inst. 8–9. Namely, we found that one of ordinary skill in the art “would have had a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience in the field of computer and/or network design and security or other relevant industry experience,” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Id. (citing Pet. 6 (citing Ex. 1003 ¶ 56)). 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 ’016 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 9

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

    “We determine that we do not need to construe any term to resolve the disputes between the parties. 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. the extent necessary to resolve the controversy.’”).” slip op. at 10

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “In addition, we find not credible Dr. Mishra’s deposition testimony that Neufeld teaches only out-of-band communication, and it is not possible for a remote management command to come to remote management controller 116 via network N and through NIC 110. See Ex. 1043,22 43:5– 44:6, 49:9–50:7; PO Sur-reply 4–5. This testimony is inconsistent with Neufeld’s express teachings, which we discuss above. Compare Ex. 1043, 43:5–44:6, 49:9–50:7, with Ex. 1005 ¶¶ 11–12, 15, 34–35, 43, Figs. 1–2.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068−69 (Fed. Cir. 2018) (finding that “the Board focused on what a skilled artisan would have been able to do, rather than what a skilled artisan would have been motivated to do at the time of the invention”). Petitioner’s arguments focus on that the modified version of IPMI could have been made, rather than that one of ordinary skill would have been motivated to combine the teachings to make the proffered combination. For example, Petitioner argues that the modified IPMI version is “one way to implement a side-band connection.” Pet. 62. This argues that the modified IPMI version could have been made. Petitioner also argues that one of ordinary skill in the art would have been motivated to make the combined modifications because “IPMI’s LAN Controller already has the necessary logic and hardware to send packets to [the] managed server via the PCI bus as shown in unmodified version of Fig. 12-1.” Pet. Reply 23; see also id. at 24 (arguing that “implementing the I2C sideband interface taught by IPMI using a PCI-I2C controller/bridge is a simple and logical solution on the PCI bus”). We agree with Patent Owner that Petitioner does not explain why this would be a motivation to add Huckins’s “PCI-I2C Bus Controller/Bridge” to IPMI’s teachings. E.g., PO Resp. 60; PO Sur-reply 20. And, we find persuasive Dr. Mishra’s testimony that “[r]equiring a LAN controller to offload management data onto the PCI bus only to route it back internally via the I/O Controller Hub introduces unnecessary design complexity, reduces system performance, and consumes additional bandwidth and power, all without technical justification.” Ex. 2007 ¶ 148; see also id. ¶¶ 145–146 (testifying to the modified combination’s operation). We also find unavailing Petitioner’s argument that Patent Owner’s criticisms of the modified version of Figure 12-1 “do not defeat the Petition’s showing of obviousness because ‘[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.’” Pet. Reply 26 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799– 800 (Fed. Cir. 2021)). But Petitioner does not address why the modified version of IPMI is suitable. Nor does Petitioner persuasively counter Dr. Mishra’s testimony as to why one of skill in the art would not have made the proposed combination. See Pet. Reply 24–26; Ex. 2007 ¶¶ 145–148. In addition, in our view, Petitioner’s modification of IPMI to add Huckins’s “PCI-I2C Bus Controller/Bridge” is driven by impermissible hindsight and the desire to locate a distinct, second bus (the PCI bus) as required by the claims. Petitioner’s arguments to this end rely impermissibly on the ’016 patent itself as a roadmap. See Grain Processing Corp. v. Am.-Maize Prods. Co., 840 F.2d 902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1012 (Fed. Cir. patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit.”’)); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). slip op. at 37

  Patent outcomesUS 8,474,016 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,474,016
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentable
  PTAB · Feb 9, 2026 · IPR2024-01403 · APJ Arthur M Peslak · IPR · Final written decision

  Claims 1–17 are unpatentable: claims 1–17 as obvious over Yin and Koshimizu; claims 1, 3, 5, 7, 8, 10, 12, and 14–16 also as anticipated by Norström; claims 7 and 15 as obvious over Norström.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) “would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 22–23 (citing Ex. 1003 ¶ 63). Patent Owner counters that a person of ordinary skill in the art would have (1) a Bachelor of Science degree or equivalent degree in electrical engineering, physics, materials science, or a similar field; and (2) at least two years of industry experience in semiconductor design and/or fabrication. A person also would have qualified as a POSITA with some combination of (1) more formal education (such as Master of Science degrees) and less technical experience, or (2) less formal education and more technical or professional experience in the fields lists above. PO Resp. 8–9 (citing Ex. 2004 ¶¶ 25–27). Patent Owner also criticizes Petitioner’s “requirement of a master’s degree[s]” because “engineers working in this field and implementing designs such as those described in the ’673 Patent, typically have bachelor’s degrees.” Id. (citing Ex. 2004 ¶ 27). Petitioner in turn argues that Patent Owner’s proposed level of skill in the art is an “immaterial” variation of Petitioner’s proposal. Pet. Reply 1. Petitioner further argues that “[b]oth parties agree that a POSITA would have at least two years of experience in semiconductor design and fabrication, and nothing in the POR identifies any claim element or obviousness analysis that would turn on whether a POSITA held a bachelor’s or master’s degree.” Id. at 2. We apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’673 patent and the prior art. However, our determinations herein would not change if we applied Patent Owner’s proffered level of skill in the art.” slip op. at 12

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

    “federal courts and the International Trade Commission, both of which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. 37 C.F.R. § 42.100(b) (2023). Accordingly, we construe each challenged claim of the ’673 patent to generally be “the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Neither Petitioner nor Patent Owner proposes any claim construction. Pet. 19; PO Resp. 9. Based on our review of the record, we determine that no express construction of any claim term is necessary for purposes of this Decision. 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 13

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have reviewed Petitioner’s undisputed contentions and evidence and find that that an ordinarily skilled artisan would have been motivated to combine Yin and Koshimizu with a reasonable expectation of success because the combination uses a known method, chamfering the corners of a deep isolation trench with known results of not overfilling the sides of the trench and added structural stability. Ex. 1003 ¶¶ 81–89. Petitioner’s contentions are supported by the cited testimony of Dr. Thompson to which we accord substantial weight because it is supported by the disclosure of Yin, Koshimizu, Exhibit 1007 (“Wolf”), Exhibit 1008 (“Tews”), Exhibit 1009 (“Moens”), and Exhibit 1010 (“Stiffler”). See id.” slip op. at 26

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

    “Petitioner next contends that an ordinarily skilled artisan would have had a reasonable expectation of success because “[c]hamfering the outer corners of Yin’s trench would have required nothing more than an adjustment to the mask pattern that defines the outline of the trench to have chamfered corners instead of square corners.” Pet. 26 (citing Ex. 1003 ¶ 89). Petitioner further contends that “[i]t was also known in the art that 135˚ angle corners (i.e., chamfered), rather than 90˚ angle corners (i.e., unchamfered) were one solution to improve problems associated with trench refill.” Id. at 26–27 (citing Ex. 1003 ¶ 89). Patent Owner does not address Petitioner’s motivation to combine and reasonable expectation of success arguments. PO Resp. 13–23; Pet. Reply 3 n.1. We have reviewed Petitioner’s undisputed contentions and evidence and find that that an ordinarily skilled artisan would have been motivated to combine Yin and Koshimizu with a reasonable expectation of success because the combination uses a known method, chamfering the corners of a deep isolation trench with known results of not overfilling the sides of the trench and added structural stability. Ex. 1003 ¶¶ 81–89. Petitioner’s contentions are supported by the cited testimony of Dr. Thompson to which we accord substantial weight because it is supported by the disclosure of Yin, Koshimizu, Exhibit 1007 (“Wolf”), Exhibit 1008 (“Tews”), Exhibit 1009 (“Moens”), and Exhibit 1010 (“Stiffler”). See id.” slip op. at 25

  Patent outcomesUS 7,772,673 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,772,673
• Lenovo (United States), Inc. v. University Of RochesterSome claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01225 · APJ Thu A Dang · IPR · Final written decision

  Claims 1 and 3–7 are unpatentable as obvious; claims 8–12 were not shown unpatentable because the asserted grounds did not establish asynchronous operation between domains.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification is the ‘single best guide to the meaning of a disputed term,’ . . . and ‘is, thus, the primary basis for construing the claims.’” Trs. of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citations omitted). Although Patent Owner contends that the Specification disparages systems that impose significant restrictions on the possible choices of frequencies (PO Resp. 21), we find availing Petitioner’s contention that “[s]upport for Patent Owner’s construction is absent from the specification.” Pet. Reply 10. As Petitioner points out, Patent Owner’s claim construction “appears to be based on a single paragraph of the ’443 patent referring to preexisting ‘synchronization schemes [that] restrict the phase relationship and relative frequencies of the clocks.” Id. That is, the only reference by Patent Owner to the Specification is that the Specification states that “Some synchronization schemes restrict the . . . relative frequencies of the clocks, thereby eliminating the need for hardware arbitration [27]. Unfortunately, these schemes impose significant restrictions on the possible choices of frequences.” PO Resp. 26 (citing Ex. 1001, 6:32–36). We agree with Petitioner that such disclosure in the Specification “does not describe how these synchronization schemes ‘restrict the phase relationship and relative frequencies’ with any specificity.’” Pet. the Specification that some schemes impose restrictions on the possible choices of frequency is not a disparagement of any system that has limited choices of frequency or would preclude the claims from covering such prior art techniques. Instead, as Petitioner points out, the Specification of the ’443 patent states “[t]he preferred embodiment uses four domains […] so that domains may vary somewhat in size and still be covered by a single clock.” Id. (citing Ex. 1001, 5:57–59). As Dr. Baker testified in support of Petitioner’s contention, “the preferred embodiment of the ’443 patent relies on a single external master clock that distributes a signal to the local PLL of each domain.” See Ex. 1032 ¶ 9. Thus, although Patent Owner contends that clock signals generated based on a master clock cannot be interpreted to be generated independently of the clock signals generated for others of the plurality of domains (PO Resp. 49), we agree with Petitioner that such claim construction would “exclude[] the preferred embodiment of the ’443 patent,” which is disfavored. Pet. Reply 11. For the reasons discussed above, we conclude that “changeable independently” of the other domains does not require that the separate clocks in the plurality of domains be globally-asynchronous.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “As both parties recognize, (PO Resp. 5; Pet. Reply 12), “[actual] [r]eduction to practice in the United States requires that the invention be embodied in tangible form.” Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002). In particular, actual reduction to practice requires a showing of the invention in a physical or tangible form that shows every element. not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445 (Fed. Cir. 1984). Here, Patent Owner does not provide any evidence showing every element of the claims in physical or tangible form, as required, but rather contends that the Specification refers to the Paper, wherein the Paper stated that simulation using a software, SimpleScalar, was performed. PO Resp. 16. We are persuaded by Petitioner’s contention that the SimpleScalar simulation was not an actual reduction to practice of the claimed invention. Pet. Reply 12. As Petitioner points out, claim 1, for example, is directed to a “microprocessor,” wherein “Patent Owner has presented no evidence and has not alleged that any physical microprocessor was ever produced or operated.” Id. at 13; see PO Resp. 15–17. And as Petitioner points out, “Patent Owner has produced no evidence of any physical prototype of the claimed microprocessor that could have validated the simulation.” Pet. Reply 13–14. We agree with Petitioner that, at most, such simulation “demonstrated feasibility for prototyping of a microprocessor,” but not a tangible form of the microprocessor itself as required for an actual reduction to practice. Id. at 14; see also Standard Mfg. Co. v. United States, 25 Cl. Ct. 1, 67 (1991) (“The feasibility of the optical alignment system may have been proven by the optical mock-up, but the optical mock-up was not a reduction to practice of the proposed MHU–145/M trailer.”).” slip op. at 36

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

    “Here, we find that Petitioner has not met its burden to prove that one of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  • BurdenMixed

    “of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentable
  PTAB · Jan 30, 2026 · IPR2024-01078 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–6, 11–15, and 38–43 were not shown unpatentable because Petitioner failed to establish obviousness over the asserted combinations, including the feasibility and motivation to use curved batteries in a ring.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. PO Resp. 22; see also Ex. 2018 ¶ 27. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’953 patent and the references cited in the Petition.” slip op. at 9

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

    “Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. “Patent Owner agrees with Petitioner that no terms need to be construed.” PO Resp. 22. We agree with the parties that resolution of their dispute does not require us to construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy controversy) (citing 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 not foundReasonable expectation not foundNot shown unpatentable

    “be improper hindsight in Petitioner’s position. Petitioner and Dr. Anthony assume that a POSITA would position the battery between Schröder’s ring halves and implement Mestas’s curved battery because it “allows a larger battery to conform to a ring’s circular shape without stressing the battery or ring housing.” Pet. 60, 64–65; Ex. 1002 ¶¶ 337, 351–354. That position, however, ignores alternative designs that are at least equally supported by Schröder’s disclosure (see Ex. 1007, Fig. 3), but would not result in a ring configured as recited in the challenged claims. Petitioner attempts to downplay this concern by characterizing the modification of Schröder’s ring to include Mestas’s curved battery as an obvious “matter of choice” in design. See Reply 10–11 (citing Ex. 1079 ¶¶ 71–77). We disagree. As explained above, the record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor because they are “5 to 10 times” the size that would be required for a finger ring. PO Resp. 27 (quoting Ex. 2021, 313:12). Petitioner argues that it “does not propose bodily incorporating Mestas’s battery into Schröder’s ring,” which on the surface is correct. See Reply 10. But this does not help Petitioner meet its burden because its actual obviousness theory that “a POSITA would have found it trivial to implement Mestas’s teachings into a ring like Schröder’s ‘finger-ring’” is not persuasive. See Pet. 60 (citing Ex. 1002 ¶ 338). For the same reasons explained in Section II.D.1 above in our analysis of Ground 1, Dr. Mestas’s teaching of a curved battery (Ex. 1002 ¶ 338) in the much smaller form factor of Schröder’s ring is not credible. See Ex. 2021, 315:9–318:9 (acknowledging that it would have been beyond the level of ordinary skill to miniaturize Mestas’s battery, but that a POSITA could try to procure one); 321:5–10 (conceding that he did not try to ascertain whether such a battery was available in the relevant time frame). Instead, we credit Dr. Mercier’s testimony that Petitioner’s proposed modification would have presented intractable practical challenges. Ex. 2018 ¶¶ 228, 230–240 (describing various aspects of battery design that Dr. Anthony did not consider). As before, Dr. Mercier’s testimony is further supported by evidence showing a consistent pattern of flat battery use in prior art finger-ring devices. See, e.g., Ex. 1005 (Niwa), Figs. 22, 29; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura), Fig. 24; Ex. 2018 ¶¶ 57–67. In sum, Petitioner’s showing for limitation 1[c] is deficient in multiple respects. First, Petitioner assumes that an ordinarily-skilled artisan would have been motivated to implement Mestas’s curved battery in the much smaller interior space occupied by Schröder’s inlay 12 without sufficiently considering the feasibility of that modification or alternative designs suggested by Schröder. Second, even if we accept Petitioner’s purported rationale for the combination (which we do not because we find it that it is predicated on improper hindsight), Petitioner has not shown that an ordinarily-skilled artisan would have had a reasonable expectation of successfully implementing the proposed modification.” slip op. at 46

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “We find that the evidence presented by Patent Owner is sufficient to establish that the Oura Ring Gen. 3 Horizon and Gen. 4 products are commercial embodiments of claim 1 of the ’953 patent and that claim 1 is coextensive in that it encompasses the entire structural apparatus of these products. See PO Resp. 82–92; Ex. 2018 ¶¶ 322–346 (comparing these products to claim 1); Ex. 2029; Ex. 2030; Ex. 2118; Ex. 2119.9 Indeed, Petitioner does not challenge any aspect of Dr. Mercier’s limitation-by-limitation analysis showing that these products practice claim 1. But more than just practicing the claimed invention, Patent Owner’s evidence supports that claim 1 recites the overall structure that provides for the particular form factor of the Oura Ring Gen. 3 Horizon and Gen. 4 products, i.e., a fingerring “wedding band” design that allows for the electronic components to be entirely contained within the ring housing with a curved external surface having no protrusions or bulges. Ex. 2018 ¶¶ 359–360; see also id. ¶¶ 322–346 (pictures depicting wedding band design of the Oura Ring Gen. 3 Horizon and Gen. 4 products); Ex. 2019 ¶¶ 47–49 (“[Patent Owner’s] decision to highlight the ring form factor indicates this feature’s importance to the marketplace success of the Oura Ring.”). We disagree with Petitioner’s assertion that the Oura Ring Application and/or Oura Membership are essential, unclaimed features such that a presumption of nexus is not appropriate. The Oura Application functions in conjunction with the Oura Ring to form a “complete solution” 9 Patent Owner and Dr. Mercier only compare these products to claim 1. Patent Owner has not demonstrated a nexus to independent claim 38. ¶¶ 20–21. The Oura Application cannot receive or display any information absent the Oura Ring’s ability to collect the information from the user. Id. Even though the Oura Application may provide additional unclaimed functionality, such as displaying activity, sleep, and readiness scores based on the data collected by the Oura ring that allow “a user to take advantage of the ring’s offerings,” this functionality is secondary to the ring’s ability to collect that data, without which, the Oura Application would serve no purpose. See Ex. 2019 ¶ 21; Ex. 2024, 93:22–95:22. As the Federal Circuit has explained, “there is rarely a perfect correspondence between the claimed invention and the product.” Fox Factory, 944 F.3d at 1374. Here, we find that on the spectrum of “unclaimed features,” the Oura Ring Application is closer to the “insignificant features” end because, while it allows the user to access and interpret data tracked by their Oura Ring, it does not materially impact the functionality of the Oura Ring or its structure.10 See Teva 8 F.4th at 1361 (explaining that “like the coextensiveness requirement itself, the concept of unclaimed features is best viewed as part of a spectrum”).” slip op. at 27

  Patent outcomesUS 10,281,953 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 10,281,953
• 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentable
  PTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision

  Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11

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

    “1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. 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 12

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

    “substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36

  Patent outcomesUS 11,806,209 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,806,209
• Trove Brands, LLC v. Camelbak Products, LLCNo claims unpatentable
  PTAB · Jan 15, 2026 · IPR2024-01137 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–7 and 9–23 were not shown unpatentable under § 103 because the asserted combinations failed to teach the claimed mouthpiece movement or bite-actuated compression.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Trove contends that a person of ordinary skill in the art “would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products” and that “[m]ore work experience may substitute for a lower level of education, and vice versa.” Pet. 18 (citing Ex. 1003 ¶ 26). While CamelBak offers a “slightly different” level of skill in the art, it nonetheless “discerns no material difference between the definitions provided by the parties for purposes of the 2 JP 2002-211613, published July 31, 2002 (Ex. 1004, “Nakajima”). 3 US 6,070,767, issued June 6, 2000 (Ex. 1005, “Gardner”). 4 WO 2004/063042, published July 29, 2004 (Ex. 1006, “Ribarits”). 5 US 4,485,963, issued Dec. 4, 1984 (Ex. 1007, “Panicci”). 6 US 6,523,711 B1, issued Feb. 25, 2003 (Ex. 1010, “Hughes”). Board’s decision on the patentability of the ’255 patent.” PO Resp. 14–15. That being the case, we adopt Trove’s proposed definition of the level of skill in the art, as it is reasonable and consistent with what is reflected in the asserted prior art and the specification of the ’255 patent. B. Claim Construction” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner

    “not move in a circular path that maintains a constant radius about the axis of rotation defined by McDonough’s axle 30, but instead engages in up-and-down translational motion (red arrows) relative to axle 30. Thus, we understand CamelBak’s arguments during reexamination to have distinguished the purely rotational (i.e., circular) motion of the claimed mouthpiece from a mouthpiece that moves with a translational component relative to the pivotal axis. In sum, this reexamination history shows that, by distinguishing over the translational motion of McDonough’s mouthpiece, CamelBak limited the claimed mouthpiece to one that (1) maintains a circular path of constant radius about the pivotal mount’s axis of rotation, and (2) does not include a path that has a translational component relative to the pivotal axis. See Fenner Investments, Ltd. v. Cellco Partnership, 778 F.3d 1320, 1323 & 1325 (Fed. Cir. 2015) (“Any explanation, elaboration, or qualification presented by the inventor during patent examination is relevant, for the role of claim construction is to capture the scope of the actual invention that is disclosed, described, and patented.”) (internal quotation marks omitted); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1158 (Fed. Cir. 1997) (“[T]hrough statements made during prosecution or reexamination an applicant for a patent or a patent owner, as the case may be, may commit to a particular meaning for a patent term, which meaning is then binding in litigation.”) (emphasis added); see also Univ. of Massachusetts v. L’Oreal S.A., 36 F.4th 1374, 1379 (Fed. Cir. 2022) (“The prosecution history, in particular, may be critical in interpreting disputed claim terms, and even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.”) (internal quotations omitted).” slip op. at 17

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

    “Those detailed descriptions demonstrate that “adapted to,” as recited in claims 1 and 20, means that the resilient mouthpiece is specifically designed and configured to dispense fluid as a result of a user biting the mouthpiece, rather than merely being “capable of” being compressed. See Giannelli, 739 F.3d at 1379–80. Indeed, as disclosed, a distinct benefit of the resilient mouthpiece being bite-actuated “is that a user may position the drink bottle (and mouthpiece) to a desired drinking orientation, and even a partially or completely inverted orientation, without drink fluid being dispensed from the mouthpiece” until the user bites upon the mouthpiece to commence fluid flow through self-sealing valve to the user. Id. at 10:9–19. Thus, the intrinsic evidence, i.e., the specification and figures of the ’255 patent, confirm that the phrase “adapted to” means “designed or configured to” and is not satisfied by mere hypothetical capability. That is, as claimed, the resilient mouthpiece is designed or configured to compress based on actual forces applied by a user’s teeth, as opposed to merely being capable of compression based on the inherent nature of the mouthpiece’s material. C. Obviousness” slip op. at 24

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

    “Although we agree with Trove that Nakajima’s mouthpiece engages in up-and-down movement relative to the pivot axis identified in Trove’s annotated figures, we disagree that Nakajima’s mouthpiece is “pivotal about an axis defined by the pair of lateral projections as [they] rotate within the pair of sockets,” as required by claim 1. As discussed above, the proper construction of this claim limitation requires that the mouthpiece moves with rotational motion in a circular path of constant radius about the pivotal axis defined by the pair of lateral projections. See supra § II.B.1. Nakajima, on the other hand, discloses that its mouthpiece moves with translational motion, i.e., up-and-down movement, relative to the pivotal axis defined by lateral projections 19 of Nakajima’s lid 4—“[T]he mouthpiece moves up and down in conjunction with the opening and closing of the lid.” Ex. 1004 ¶ 3 (emphasis added); see also id., Abstract (“[T]he mouthpiece 2 moves up and down in conjunction with the opening and closing of the lid 4.”). Indeed, although Trove relies exclusively on Nakajima’s disclosure of up-and-down movement for the mouthpiece, Trove never explains how such up-and-down movement equates to rotational motion required by the disputed limitation of claim 1. Nor can it.” slip op. at 28

  Patent outcomesUS 10,676,255 not shown unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 10,676,255
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentable
  PTAB · Dec 17, 2025 · IPR2024-01077 · APJ Michael A Valek · IPR · Final written decision

  Claims 1, 11, and 13–20 were not shown unpatentable over either Yuen and Mestas or Schröder and Mestas, principally because the curved-battery and waterproof-cavity showings were deficient.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors.” slip op. at 8

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

    “We agree with Petitioner that the term “ring” is not limited to a finger- worn ring. All of the challenged independent recite a “wearable ring computing device” (claims 1 and 11) or “ring computing device” (claim 14). Nothing in the claim language itself refers to where that device is worn. Moreover, the fact that Patent Owner has in several related patents added claim language to expressly recite a ring that is “finger-worn” or “worn around the finger” evidences that the plain meaning of the term “ring” by itself does not require such. Ex. 1362, 44:45–46:61 (claims 1–18); Ex. 1363, 44:64–46:56 (claims 1–17); Ex. 1364, 48:22–23 (claim 1); see Nystrom v. TREX Co., Inc., 424 F.3d 1135, 1143 (Fed. Cir. 2005) (explaining that the fact that another claim recites a “wood decking board” suggests the term “board” is not itself limited to one made from wood or cut from a log because “[w]hen different words or phrases are used in separate claims, a difference in meaning is presumed”). This understanding is further supported by the Specification of the ’859 patent. It is true, as Patent Owner asserts, that the Specification describes a preferred embodiment that is a finger-worn ring. See, e.g., Ex. 1001, Figs. 22A–B, 23A (depicting a finger-worn ring). But precedent cautions against importing limitations from the preferred embodiment into claims. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2004) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.”). Indeed, the Specification here anticipates such arguments and makes clear that the applicants’ wearable computing device (WCD) is not limited to a ring worn on the finger: The WCD can be in the form of a ring that can be worn on the finger of a human (or animal) user. Although the WCD of the present disclosure is depicted as a ring that can be worn on the finger of a user, other shapes, designs, and form factors can be utilized for the WCD. For example, the WCD can be in the form of a wrist band, bracelet, necklace, earring, or any other type of wearable accessory. In this regard, references to the finger of a user in the present application can be considered to apply to other portions of a human body depending on the form of the WCD, such as wrist, neck, ear, etc. Ex. 1001, 8:51–61.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “ordinarily-skilled artisan to modify Yuen’s device to form the waterproof cavity recited in claim 1, much less explain the particular modifications Petitioner contends that artisan would have made to Yuen’s device housing to achieve such. This is particularly problematic given that the figures Petitioner relies upon in Yuen and Mestas uniformly depict larger, wrist/arm-band type devices. See Ex. 1006, Figs. 2–13, 12:52–55 (depicting a “wrist-worn or arm-mounted accessory such as a watch or bracelet”); Ex. 1010, Figs. 1–6, ¶ 151 (same). Thus, Petitioner’s obviousness theory requires multiple modifications to Yuen’s depicted structure: (1) modifying the identified portions of Yuen’s device housing so that they form a waterproof cavity therebetween; and (2) shrinking that device and its components down to a ring designed to fit around a single toe. We credit Dr. Mercier’s testimony that such modifications would require a “complex” re-engineering of Yuen’s existing structure that Petitioner and Dr. Anthony do not sufficiently explain. See Ex. 2018 ¶¶ 108–109, 129–130, 137–138. The testimony in Dr. Anthony’s supplemental declaration does not provide the missing explanation. Dr. Anthony continues to assert that Yuen’s sensor protrusion is sealed in the space between the alleged bounding members, relying on the same annotated versions of Figures 4 and 5, without addressing the fact that according to Petitioner’s own annotations those bounding members only form a shell that is open to the attachment band at either end. See Ex. 1079 ¶¶ 26–28. Indeed, Dr. Anthony appears to acknowledge that Yuen only teaches attaching the sensor module portion of the alleged cavity with watertight glue, but asserts that “it would not make sense to have a device that is waterproof in some areas and not others.” Id. ¶ 29. That assertion, however, is not supported by anything beyond Dr. Anthony’s say-so and ignores that Yuen’s teachings regarding a watertight seal/glue refer only to the sensor package portion of the alleged cavity. See Ex. 1006, 14:66–15:4, 15:10–14. Dr. Anthony’s assertion that Mestas teaches additional “waterproofing techniques” that could be applied to Yuen’s housing is similarly cursory. See Ex. 1079 ¶ 30. He does not identify what those techniques are or how a POSITA would use them to modify Yuen. Id. Accordingly, we do not credit this testimony.” slip op. at 27

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia with nexusDecided for patent owner

    “the asserted evidence of secondary considerations and a patent claim if the patentee shows that the asserted evidence is tied to a specific product and that the product ‘is the invention disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988) (emphasis added)). “That is, presuming nexus is appropriate when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” Id. (internal quotation marks omitted). If, on the other hand, “the thing that is commercially successful is not coextensive with the patented invention—for example, if the patented invention is only a component of a commercially successful machine or process, the patentee is not entitled to a presumption of nexus.” Id. (internal quotation marks omitted).” slip op. at 33

  Patent outcomesUS 10,139,859 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,139,859

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.