- Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-00101 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not shown unpatentable under the asserted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we” slip op. at 32
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. WHETHER THE PETITION IS TIME BARRED The parties dispute whether the Petition is time barred based on a” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“vacated the panel’s decision denying institution. Paper 12, 6. Among other things, the Director determined based on a “review of the current record” that (1) Menard is not a real party in interest in this proceeding and (2) Menard is not a privy of Petitioner. Id. at 5. Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Id. at 5–6.” slip op. at 3
- BurdenMixed
“U.S. Patent No. 10,299,336 B2 (“the ’336 patent”) (Exhibit 1001). For the reasons explained below, a preponderance of the evidence shows that claims 1–7, 9–15, and 18–20 in the ’336 patent are unpatentable and does not show that claims 8, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (2024).” slip op. at 2
Patent outcomesUS 10,299,336 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - PTAB · Aug 12, 2025 · IPR2025-00405 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–6 and 12–26 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2025). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” For the reasons set forth below, upon considering the Petition, Preliminary Response, and the evidence of record as presently developed, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to at least one challenged claim. Accordingly, we grant the Petition and institute an inter partes review.” slip op. at 2
- BurdenNot reached
“3. Analysis On the preliminary record, we agree with Patent Owner that Petitioner fails to demonstrate that it meets the threshold showing under 35 U.S.C. § 314(a) for institution of trial with respect to Grounds 4C, 5C, and 6C.” slip op. at 91
Nonecites Phillips · KSR · GrahamPatents in suitUS 11,769,910 - PTAB · Jul 16, 2025 · PGR2025-00012 · APJ Debra L Dennett · PGR · Institution
Instituted PGR on claims 1–3 based on five grounds; the Board found each ground met the institution threshold on the preliminary record.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). A post-grant review may also be instituted when “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” See id. § 324(b). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of claims 1–3 of the ’201 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“At this stage of the proceedings, neither Petitioner’s nor Patent Owner’s proffered definitions of the level of skill appear appropriate. Petitioner’s proposal requires as little as a bachelor’s degree in organic chemistry and two years of experience as a laboratory technician working on development of molecules with targeted biological activity, and an ambiguous “understanding” of certain processes. Patent Owner’s proposal, other the other hand, requires multiple years of both formal training and actual, practical experience in highly specialized fields that involve detection of optical or radiolabeled compounds and use of molecular imaging techniques such as PET and SPECT. For the purposes of this decision, on the record at this time, we find that a POSA would have had a Ph.D. in chemistry, biochemistry, or a comparable field or an M.D., and at least four years of experience in chemical synthesis of compounds that may be used to target biologically-significant tissues. This definition appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). The parties will have the opportunity to cross-examine Dr. Martin and Dr. VanBrocklin in this proceeding to develop a full record for us to determine the weight that each expert’s testimony should be given. We invite the parties to further brief the definition of a POSA here, and whether we should discount either experts’ testimony due to lack of qualifications.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“c) Analysis On the present record, we find that “low molecular weight” is not limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration all concerns metabolomics and metabolites, and we find no reason that even a vague definition of metabolites applies to the claimed compounds. See Ex. 1002, ¶ 102. Moreover, the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’201 patent fall outside of Patent Owner’s proposed definition is persuasive (see id., ¶ 103), as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts’” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically form about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) The Pomper reference (Ex. 1006) also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 2002, ¶ 60; Ex. 1006, ¶ 12. The table giving the molecular weight of a “selection of compounds disclosed by Pomper” (see Ex. 2002, ¶ 62) is not persuasive in defining “low molecular weight,” as it does not explain how those included were “selected” and does not include molecular weights for all of the examples.7 In addition, Patent Owner’s definition does not appear to apply to all claimed compounds.8 7 At least one of the examples (SRV73) not included in the table appears to have a molecular weight well over “about 1,500 Daltons.” 8 See, e.g., claim 113 of Ex. 1006. Patent Owner’s arguments distinguishing “low molecular weight” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The ’201 patent defines “alkyl” as “a straight (i.e., unbranched) or branched chain, acyclic or cyclic hydrocarbon group, or combination thereof” “ that has “the number of carbon atoms designated (i.e., C1–C10 means one to ten carbons, including 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 carbons)” and “[i]n particular embodiments, the term ‘alkyl’ refers to C1-20 inclusive, including 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 carbons” “unless otherwise stated.” Ex. 1001, 39:44–58. Although substituents at the R1x position in the claims are limited to “C1-6alkyl,” those at position R3x are not. Ex. 1001, Certif. Corr. Patent Owner’s representation that “Jansen I provides ‘the following definitions’ stating that ‘alkyls groups of this invention comprise from 1 to 6 carbon atoms’” is inaccurate. See Prelim. Resp. 19. In fact, Jansen I states: The term “alkyl” by itself or as part of another substituent refers to a fully saturated hydrocarbon of Formula CxH2x+1 wherein x is a number greater than or equal to 1. Generally, alkyl groups of this invention comprise from 1 to 6 carbon atoms. Alkyl groups may be linear or branched and may be substituted as indicated herein. When a subscript is used herein following a carbon atom, the subscript refers to the number of carbon atoms that the named group may contain. Ex. 1007, 22:16–23 (emphasis added). Neither the ’201 patent nor its incorporation by reference of Jansen I would have conveyed to a POSA that the “(CO)alkyl” of the substituent in the R3x position in the claims is intended to comprise from one to six carbon atoms or is limited to any particular length and size. “(C(O)alkyl,” having no number of carbon atoms designated, means” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,938,201 - PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,686,562 - PTAB · Jul 9, 2025 · IPR2025-00094 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Bonn and Mizuta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 5 (citing Ex. 1003 ¶¶ 67–69). Petitioner also argues that “[a]dditional education could substitute for professional experience and vice versa.” Id. On the present record, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Prelim. Resp. 1–52. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’003 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We apply the same claim-construction standard used in the federal courts—in other words, the claim-construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), which is articulated in Phillips. See 37 C.F.R. § 42.100(b). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which “is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. Neither party proposes construing any claim terms. Pet. 6; Prelim. Resp. 1–52. On the present record, we agree. As discussed below, we are able to determine whether to institute inter partes review of the ’003 patent without expressly construing any terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had a reason to modify Bonn to remove local oscillator 55. Prelim. Resp. 13–15. We disagree. Petitioner argues that, “[i]n addition to using Figure 7’s ‘dual gate FET structure in high frequency signal mixing’ applications . . . , Bonn discloses using this dual gate FET in ‘other applications such as high frequency signal amplification.’” Pet. 22 (quoting Ex. 1006, 11:26–37). Indeed, Bonn does suggest using its structure for signal amplification. Ex. 1006, 11:26–37 (“the dual gate FET structure of the present invention can be tailored to provide superior performance . . . in . . . other applications such as high frequency signal amplification”). On the present record, this appears to have provided the motivation for a person of ordinary skill in the art to use Bonn for amplification instead of for signal mixing. Petitioner relies on the testimony of Dr. Bernstein to show the modifications that a person of ordinary skill in the art would have considered necessary in order to convert Bonn’s structure for signal-amplification use. Pet. 23–25 (citing Ex. 1003 ¶¶ 98–109). In particular, Petitioner cites Dr. Bernstein’s testimony that a person of ordinary skill in the art “would have found it obvious to remove Figure 1’s LO (local oscillator) port 55 and its associated impedance matching components because the LO signal is no longer being mixed.” Ex. 1003 ¶ 98; see Pet. 23. Dr. Bernstein supports this testimony with citations to Bonn and with reasoning regarding why a person of ordinary skill in the art would have made this modification. Ex. 1003 ¶ 98 (citing Ex. 1006, 1:20–23, 3:19–21, 3:30–41). Accordingly, on the present record, we are persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had reason to modify Bonn’s structure to remove the connection between a local oscillator and the gate of the second transistor. Finally, Patent Owner argues that Petitioner’s proposed modification would have rendered Bonn inoperable for its intended purpose because the modification would eliminate the ability of Bonn’s structure to conduct high frequency signal mixing. Prelim. Resp. 26–27. As Patent Owner notes, one purpose of Bonn is to mix high-frequency signals. Ex. 1006, 11:33–36. But Bonn itself teaches using its structure for “other applications,” including “high frequency signal amplification.” Id. at 11:33–37. Thus, on the present record, we are persuaded that Petitioner’s proposed modification does not render Bonn inoperable for its intended purpose so much as it acknowledges the modifications necessary to convert Bonn from one of its intended purposes to another. Thus, Petitioner has shown sufficiently for the purpose of the present Decision that a person of ordinary skill in the art would have had reason to combine Bonn and Mizuta and that the combination of Bonn and Mizuta teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,264,003 - Apple Inc. v. THL Holding Company, LLCAll claims unpatentablePTAB · Jul 3, 2025 · IPR2024-00398 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–9 are unpatentable as obvious: claims 1, 4, 7, and 8 over Kalliola and Vauclair; claims 2, 3, and 6 with Kalayjian; claim 5 with Turunen; and claim 9 with Trimble.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with the qualifications proposed by Petitioner: “this description reasonably represents the level of ordinary skill necessary to understand and implement the teachings of the ’680 Patent, as well as the prior art cited in this proceeding.” PO Resp. 13–14 (citing Ex. 2002 ¶ 22). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’680 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes that, based on Patent Owner’s proposed construction in the parallel litigation, we construe “pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Pet. 6 (quoting Ex. 1009, 15–168). In Response, Patent Owner adopts Petitioner’s interpretation of this term. PO Resp. 14. We adopt the parties’ proposed construction for this term. We determine that we need not construe any other claim terms. 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 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Second, Petitioner demonstrates that the combination of Kalliola and Vauclair teaches claim limitations 1(d)(iv) and 1(d)(v). As discussed and cited to above, the Petition identifies that, with Kalliola’s touch screen as the claimed “touch screen,” Kalliola’s processor presents a graphical user interface via its touch screen as set forth for limitation 1(c) and 1(d)(ii), and Kalliola’s processor operates in conjunction with its graphical user interface to perform claimed steps as set forth for limitation 1(d)(iii). See Pet. 20–29. We agree that the assertions are supported by Kalliola’s disclosure of a touch screen with a graphical user interface presented thereon, where “tactile elements” “allow the user . . . to enter data . . . into the device.” See Ex. 1004 ¶¶ 26, 40, 42, 44, 51, 71, Figs. 3, 5. Petitioner also asserts, and we agree, that Kalliola teaches the use of Bluetooth-enabled emitters in remote devices that communicate with its wireless communication device with a signal emitter. Pet. 29–31 (citing Ex. 104 ¶¶ 9, 71, 73–75, 77, 107, Fig. 5). Petitioner contends, and we agree, that Vauclair provides additional specificity regarding the pairing process between two devices with its disclosures of a pairing process between devices using protocols that include Bluetooth, wherein a user can select a pairing option from a menu on a display. Id. at 31–32 (citing Ex. 1005 ¶¶ 22, 24, 28, 30, 34–36, 49, Fig. 1; Ex. 1003 ¶¶ 164–167). Petitioner argues, and we agree, that it would have been obvious to a person of ordinary skill in the art to configure Kalliola to use its processor to present “a pairing menu to enable a user to initiate a Bluetooth pairing process between the WCD and the signal emitter by selecting a pairing option via the WCD’s touchscreen,” with Vauclair teaching at least the selection of a pairing option presented on its display, because the presented pairing menu on Kalliola’s touch screen would allow the user to pair the WCD with the user’s personal item signal emitters and would also allow the devices to recognize each other on subsequent connections. Id. at 34–35 (citing Ex. 1003 ¶ 172); see also Ex. 1005 ¶¶ 30, 36. Consequently, we also agree with Petitioner’s assertion that it would have been obvious to a person of skill of ordinary skill in the art that Kalliola’s graphical user interface on its touch screen would have generated signals corresponding to the user’s inputs at least to carry out designated functions, like the initiation of a pairing process, and “the signals generated by the GUI from interaction at the touchscreen would be sent to the WCD’s processor so that the processor can interpret the user’s inputs and take the appropriate action.” Pet. 35; see also Pet. Reply 2–7. Petitioner also asserts, and we agree, that generating processor signals in response to a user indication was a known mechanism for wireless devices, as were Bluetooth pairing and corresponding pairing menus, and there would be no change to the respective functions of Kalliola’s’ wireless communication devices and Vauclair’s pairing menu. Pet. 36 (citing Ex. 1003 ¶ 175). The Petition argues, and we agree, that because Bluetooth pairing and pairing menus were conventional prior to time of the invention, there would have been a reasonable expectation of success configuring Kalliola’s wireless communication device. Id. (citing Ex. 1003 ¶ 176); see also Ex. 1003 ¶¶ 71–75 (Dr. Buehrer providing evidence on Bluetooth-connected devices and associated pairing). Accordingly, we determine that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, a reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(iv). As to limitation 1(d)(v), we also agree with Petitioner that in response to a generation of a pairing signal as discussed in limitation 1(d)(iv), Vauclair discloses that wireless transceivers communicate a series of RF signals back and forth to pair the devices. Pet. 37–38. Petitioner asserts, and we agree, that, in combination, it would have been obvious to configure Kalliola’s Bluetooth transceiver with Vauclair’s teachings for the communication of RF signals to pair devices. Id. at 39. Petitioner contends, and we agree, that a person of ordinary skill in the art would have understood that Kalliola teaches that its wireless communication device performs Bluetooth communications with signal emitters, with the user selecting a desired signal emitter for locating objects, and that this pairing would also allow two Bluetooth devices to recognize each other on subsequent connections. Id. (Ex. 1003 ¶ 184). Petitioner asserts, and we agree, that applying Vauclair’s known technique of communicating RF signals to pair devices would improve Kalliola’s wireless communication device and yield the predictable result of Bluetooth-paired devices. Id. We also agree with Petitioner’s argument that this pairing was an understood and conventional feature of Bluetooth mobile communication devices, so there was a reasonable expectation of success in the combination. Id. at 40 (citing Ex. 1003 ¶ 186); see also Ex. 1003 ¶¶ 71–72 (Dr. Buehrer providing evidence on Bluetooth-connected devices). Accordingly, we find that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(v).” slip op. at 40
- Strike new argumentNew argument consideredDecided for petitioner
“Ex. 1003 ¶ 172. The Petition also asserts that, in the combination, there would be no change to the respective functions of either Kalliola’s WCD or Vauclair’s pairing menu. Pet. 36. Thus, the Petition relies on Kalliola’s processor, and its touchscreen, and graphical user interface with Vauclair’s teachings for the pairing menu displayed, wherein pairing signals are generated by Kalliola’s graphical user interface by interaction with the screen. As we discuss further below, Petitioner includes assertions that Vauclair itself teaches that the pairing signal is generated by its graphical user interface. See id. at 33, 37. The Petition, however, also relies on the combination of Kalliola and Vauclair to teach generating a pairing signal by Kalliola’s graphical user interface by interaction with its screen, as discussed above. Id. at 35. Accordingly, it is not necessary to reach the issue of whether Vauclair alone teaches that its graphical user interface generates the pairing signal. Additionally, we do not find that Petitioner’s further arguments in its Reply concerning interaction with Kalliola’s wireless communication device through its graphical user interface were impermissibly presented in view of the Petition’s specific assertions on the teachings of the combination of Kalliola and Vauclair, as discussed above, and its reliance on user interaction with Kalliola’s graphical user interface for the teaching of generating the pairing signal. See 37 C.F.R. § 42.23(b).” slip op. at 39
Patent outcomesUS 11,265,680 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,265,680 - Apple Inc. v. THL Holding Company, LLCAll claims unpatentablePTAB · Jul 3, 2025 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 11–19 are unpatentable as obvious: claims 11–14 over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian; claims 15–18 with Thorn; and claim 19 with Thorn and Sharp.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). “Patent Owner agrees that this description reasonably represents the level of ordinary skill required to understand and implement the teachings of the ’246 Patent, as well as the prior art cited in the Petition.” PO Resp. 14 (citing Ex. 2002 ¶ 22). Accordingly, we adopt Petitioner’s proposed level of skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“device.” This term appears twice in claim 11, once in the phrase “an orientation sensor to detect rotation of the mobile communication device,” and once in the phrase “rotation of the mobile communication device detected by the orientation sensor.” Ex. 1001, 39:13–14, 39:36–38. Patent Owner argues that we should construe this term as limited to “detecting the rotation of the mobile communication device as a whole, not the movement of individual components.” PO Resp. 15–18. Petitioner disputes this, arguing that “rotation of the mobile communication device” should be construed not only to cover rotation of the device as a whole but also should “encompass[] any rotation of the mobile communication device relative to any object, including itself,” which would extend to rotation of “any component of the device.” Reply 4–5. We need not resolve this dispute to determine the outcome of Petitioner’s asserted challenges to the ’246 patent. As discussed more fully below, under either party’s proposed construction of “rotation of the mobile communication device,” Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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
- Expert testimonyOther
“On the record developed during trial, we are persuaded that Petitioner has shown by a preponderance of the evidence that Kalliola teaches “an orientation sensor to detect rotation of the mobile communication device,” where “rotation of the mobile communication device” includes rotation of the device as a whole, regardless of whether it also includes rotation of one portion of the device relative to another. Kalliola teaches “motion sensors integrated in WCD 100” that are “used to detect when WCD 100 is being moved,” as well as to detect “when user 110 moves WCD 100 too quickly for an accurate DoA estimation.” Ex. 1004 ¶¶ 84, 86. Although Patent Owner argues that Kalliola’s motion sensors do not detect rotation of the device, this is incorrect on the record as developed at trial. Kalliola teaches that the motion sensor may take “the form of a semiconductor gyroscope chip.” Id. ¶ 84. There is ample evidence that gyroscopes detect rotation. Ex. 1013, 38 (identifying as an “orientation sensor” a “[t]hree-axis gyro” and a “[d]ynamic [h]igh [r]ange [gyro]”); Ex. 1046, 49:18–20 (Dr. Feuerstein testifying that gyroscopes “can be used to detect angular velocity”); Ex. 1047 ¶ 47 (citing Ex. 1051, 170; Ex. 1053, 9) (Dr. Buehrer testifying that a person of ordinary skill in the art “would understand that gyroscopes are well-known inertial sensors that specifically detect rotational motion”). Thus, by a preponderance of the evidence, Petitioner has shown that Kalliola teaches the “orientation sensor to detect rotation of the mobile communication device” of this limitation.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether Kalliola’s teaching of pausing and resuming its DoA estimation based on detected rotational motion, or Kalliola’s teaching of speeding up its DoA estimation based on detected rotational motion, amounts to determining direction based on rotation. Pet. 63–64; PO Resp. 25–27; Reply 24–27; Sur-Reply 11–14. On the record developed during trial, we are persuaded that the preponderance of the evidence supports a finding that Kalliola teaches determining direction based on rotation. First, Kalliola discloses “pausing a DoA estimation until the motion of the WCD is detected by the motion sensors,” then resuming “the updating of the DoA estimation” when motion is detected. Ex. 1004 ¶¶ 14, 84. Second, Kalliola discloses a “correction or compensation mode” that is “employed when user 110 moves WCD 100 too quickly for an accurate DoA estimation,” with this “increase[d] speed of the DoA estimation” being triggered by the “[i]ncreased activity detected by motion sensors in WCD 100.” Id. ¶ 86. As discussed above with respect to limitation 11(d), the detected motion that triggers either of these modes can be rotational motion of the WCD detected by a gyroscope.” slip op. at 22
Patent outcomesUS 11,350,246 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713
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.