- Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,680 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - PTAB · Oct 6, 2025 · IPR2025-00812 · APJ Robert L Kinder · IPR · Institution
Instituted IPR of claims 1–28 on all petitioned grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner, “no express constructions are required in this proceeding.” Pet. 4. Patent Owner “agrees that the terms of the ’728 Patent have their plain and ordinary meaning.” Prelim. Resp. 7. However, Patent Owner contends that Petitioner construes the claim language “during the driving period” to mean “throughout the driving period.” Id. at 10 (claim language found in claims 1, 13, 24, and 25). Patent Owner contends Petitioner consistently uses the term “during” rather than “throughout” in the analysis of the challenged claims. Id. Patent Owner does not provide support for any specific construction or explain why any claim construction would be necessary for resolution of this proceeding. Based on the current record, we determine the differentiation asserted by Patent Owner between the use of “during” and “throughout” does not require express interpretation as the terms “during” and “throughout” are synonymous.8 Upon review of the record, we determine that no claim terms require express construction 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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Dr. Michalson propose “that a person of ordinary skill in the art in this matter would have had at least a Bachelor of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 2-3 years of experience in the field of telematics systems.” Ex. 1003 ¶ 15; Pet. 2, 11. Dr. Michalson further proposes “[a] greater amount of education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’728 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the preliminary record, we conclude Petitioner has explained with supporting evidence how the combination of Callopy, Curry, and Thompson teaches or suggests claim 1, sufficiently to justify institution of review. That is, Petitioner explains how a person of ordinary skill in the art would have been motivated to supplement the risk assessment capabilities of Callopy-Curry with the well-known accident detection techniques of Thompson’s WreckWatch application to reduce vehicular accidents and casualties. For the purposes of institution, Petitioner has articulated a reasoned explanation why a POSITA would have been motivated to modify Callopy’s wireless device with Curry’s calculation techniques, and Thompson’s accident detection capabilities. The Petitioner has explained in detail that Curry contemplates the need for multi-modal operation for nuanced driving conditions, and that the incorporation of Callopy would be a natural modification that aligns with standard insurance evaluation methods. Petitioner further explains the implementation of Curry’s scoring system, which is capable of logging data and processing safety statistics, in combination with Callopy’s system leads to enhanced sensor-based driving evaluation in the determination of a driver’s risk profile for insurance purposes. Petitioner further explains in detail how Thompson’s implementation further provides motivation for Curry’s initiatives to “reduce traffic-related fatalities and injuries” and that a POSITA would seek the well-known accident detection technique of Thompson to achieve this. Petitioner identifies that the combination of Callopy, Curry, and Thompson not only can be achieved without any changes to underlying hardware, but also provides the functionality of recording sensor data relating to driving, calculating driving safety statistics, and detecting driving-related incidents. Moreover, as discussed, Petitioner has provided citations to the references along with corroborating testimony from Dr. Michalson that support its arguments for why and how a POSITA would have combined the prior art disclosures with a reasonable expectation of success. See Ex. 1003 ¶¶ 100–116.” slip op. at 34
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one of the challenged claims at issue. Pursuant to § 314, we hereby institute an inter partes review as to challenged claims 1–28 of the ’728 patent.” slip op. at 3
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,236,728 - Apple Inc. v. Paul PoniatowskiAll claims unpatentablePTAB · Oct 2, 2025 · IPR2024-00731 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 8–13, 15–20, and 22–27 are unpatentable as obvious over Wang, Dua, and Yong.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Ex. 1003 ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. Patent Owner does not address the level of ordinary skill in the art. See PO Resp. 2 US Patent App. Pub. No. US 2002/0023215 A1 (Ex. 1004). 3 US Patent App. Pub. No. US 2006/0165060 A1 (Ex. 1005). 4 Korean Unexamined Patent App. Pub. No. 10-2007-0063899 (Ex. 1006). Petitioner submits Yong’s Korean-language patent application and a certified translation of the same. See id. We refer to the English-language translation of Yong. To the extent necessary, and for purposes of this Decision, we accept the assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); Ex. 1003 ¶ 36.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Patent Owner does not explicitly address the claim construction of this term. See PO Resp. Patent Owner, however, does assert that “it would be logical for those skilled in [the] art to apply any available technology to further modify and improve the shopping experience by taking a scan/pic of the products bar codes, instead of entering them manually.” Id. at 2–3. This assertion is not inconsistent with a finding that the scanned bar code information may be received indirectly. Accordingly, on this record, we construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“We agree with Petitioner that the Priority Applications do not disclose the optical input and network hub limitations or their equivalent. As Petitioner argues, “disclosure in a parent application that merely renders the later-claimed invention obvious is not sufficient to meet the written description requirement; the disclosure must describe the claimed invention with all its limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998) (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)) (“It is not sufficient…that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose”). Reply 4. Accordingly, for the purposes of determining eligible prior art for this Decision, we rely on the ’578 patent’s application filing date of October 19, 2009.” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We determine that the preponderance of the evidence supports Petitioner arguments that the cited references are analogous art. Our reviewing court has stated that “[t]wo 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.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Focusing on the first of the two tests above, the test for analogous art “requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” In re Bigio, 381 F.3d at 1325. We thus consider all explanations of the inventors’ subject matter while keeping in mind that prior art is analogous when it “is from the same field of endeavor, regardless of the problem addressed. . . .” In re Bigio, 381 F.3d at 1320 (emphasis added). Thus, “field of endeavor” should not be defined narrowly based only upon the specific problem addressed.” slip op. at 21
Patent outcomesUS 8,270,578 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,270,578 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungAll claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00533 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–8 are unpatentable as obvious: claims 1, 3–8 over Chou and Sung ’479; claims 6–7 also over SungECS; and claim 2 over Goers.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We secondly conclude a POSITA would have had at least two years of experience designing and/or developing CMP technology per Patent Owner’s formulation, but we reject Patent Owner’s additional contention that this experience must include designing and/or developing pad dressers specifically. The ’270 patent claims are directed to the structure of a pad dresser, not to a method of making a pad dresser. See Ex. 1001, 17:35– 18:38. According to the ’270 patent specification, the claimed pad dresser structure is designed to condition a polishing pad so the pad may be used to attain “high performance levels in aspects such as uniformity of polished wafer, smoothness of the IC circuitry, removal rate for productivity, longevity of consumables for CMP economics, etc.” during a CMP process. Id. at 1:20–24 (Background of the Invention). Thus, the ’270 patent’s invention generally focuses on optimizing a pad dresser structure to achieve desired results in a CMP process, not necessarily on how to manufacture a pad dresser. As such, we reject Petitioner’s POSITA formulation requiring “experience in the field of integrated circuit processing and fabrication techniques” (Pet. 19) as too generic in the context of the ’270 patent’s claimed invention. We also conclude, in view of the ’270 patent disclosures discussed above, that Dr. Tsai’s opinion that ordinary skill requires experience with manufacturing pad dressers (see Ex. 2011 ¶ 28) is too conclusory and lacking in evidentiary support to be persuasive. See Best Med. v. Elekta, 46 F.4th at 1353 (“The patent’s purpose can also be informative.”).” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“The Federal Circuit has held: “To offer expert testimony from the perspective of a skilled artisan in a patent case — like for claim construction, validity, or infringement — a witness must at least have ordinary skill in the art.”9 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Commission, 22 F.4th 1369, 1375–77 (Fed. Cir. 2022); see also Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335, 1340–41 (Fed. Cir. 2024) (holding that the proffered expert does not need to have acquired the 9 Petitioner cites the Practice Guide’s statements that there is “no requirement of a perfect match between the expert’s experience and the relevant field” and “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Practice Guide 34 (citing SEB v. Montgomery Ward, 594 F.3d at 1373; Sundance v. DeMonte, 550 F.3d at 1363–64). To the extent there is any tension between the Practice Guide (issued in 2019) and the Kyocera holding (issued in 2022), we apply the latter here.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We determine Dr. Shanfield has sufficient education and experience to qualify as a person of ordinary skill in the art pertaining to the ’270 patent. Dr. Shanfield’s Ph.D. in physics satisfies the educational prerequisite of at least a bachelor’s degree in an engineering related field such as physics. See Ex. 1002 ¶ 2, App. A. Furthermore, his advanced degree (Ph.D. in physics) versus ordinary skill (a bachelor’s degree in an engineering related field) provides considerable leeway when turning to the experiential component for ordinary skill. Nonetheless, Dr. Shanfield also has at least two years of experience with designing and developing CMP technology per the experience prerequisite, as follows. Dr. Shanfield worked at Raytheon Corporation for over 10 years, during which he “worked directly with engineers in the selection, installation, and optimization of several chemo-mechanical polishing systems (CMP), including analysis of operational maintenance and performance monitoring,” and he “directly participated in establishing the required metrology (optical thickness monitoring) for maintaining polishing uniformity standards.” Ex. 1002 ¶ 3 (emphasis added). He later joined Draper Laboratory in 2003, where he currently is the Division Leader of Advanced Hardware Development. See id. ¶ 5. During Dr. Shanfield’s time at Draper, the laboratory “acquired several semiconductor-grade CMP systems for the purpose of fabricating multi-chip modules and for planarization operations in MEMS devices,” and he was “involved in their operation and optimization.” Id. (emphasis added). When asked during a deposition whether he is “an expert in CMP equipment design,” Dr. Shanfield stated he is “very familiar with the design of CMP equipment” because he has “seen many systems” and “installed or supervised the installation of systems.” Ex. 2003, 17:22–19:3. He testified he has “designed apparatus that worked with CMP equipment” although he has not “designed the CMP equipment itself.” Id. at 18:13–19. As an example of being “involved in the manufacture of CMP pad dressers” specifically, Dr. Shanfield stated that during his time at Raytheon, he worked with other professionals “to use the CMP system to process MEMS, M-E-M-S, devices” which “needed a certain kind of planarization process [that] required constant conditioning,” so the team “had to try to fabricate something that would provide conditioning that would last longer.” Id. at 19:4–20:9. Thus, we conclude Dr. Shanfield qualifies as a POSITA pertaining to” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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 v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). 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. Petitioner proposes constructions for terms: “superabrasive,” “protrusion,” “sharp portion,” and “attitude.” Pet. 20–21. Patent Owner does not propose constructions for any claim term. See generally, PO Resp. We discern constructions of these claim phrases or others are not required for the purposes of this Decision. 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
Patent outcomesUS 8,974,270 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,974,270 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungSome claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00535 · APJ George R Hoskins · IPR · Final written decision
Claims 1–9 and 12–21 are unpatentable over the asserted grounds; claims 10 and 11 were not shown unpatentable because Tsai and Sung ’026 did not establish the required number of working particles.
RulingsFinal written decision- Skill levelOther
“Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9 1. Person of Ordinary Skill in the Art Pertaining to the ’802 Patent .................................................................................... 9 2. Patent Owner’s Motion to Exclude Dr. Shanfield’s” slip op. at 2
- ExcludeMotion to exclude, deniedDenied
“Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“16–18 being obvious over Tsai and Sung ’026 as our own in this Decision. See Pet. 56–62, 70–75. We accordingly conclude a preponderance of the evidence presented here establishes the unpatentability of these claims. Patent Owner has waived any opposition other than his filing date priority arguments discussed above. See Inst. Dec. 78; Paper 15, 10.” slip op. at 106
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“concluded: “It is not clear to us, and Dr. Shanfield does not explain persuasively, how Tsai’s disclosure that its ODD has more cutters (i.e., working particles per claim 9) than the conventional BDD leads to his conclusion that all of the diamond particles in the ODD are cutters.” Inst. Dec. 76 (emphasis added). Patent Owner urges us to maintain that conclusion, for various reasons, including testimony from Dr. Tsai. See PO Resp. 49–52; Ex. 2011 ¶¶ 43–47. Patent Owner also reiterates his opposition to Dr. Shanfield’s “extrapolation” from Tsai’s Figures to reach a conclusion as to the total number of diamond grits in the Tsai ODD, including the “working” particles of claims 8, 9, and 12. See id. at 50–51 (citing Ex. 1002 ¶¶ 186–189).” slip op. at 108
Patent outcomesUS 9,724,802 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,724,802 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungAll claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00534 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–6, 9–12, and 20 are anticipated by or obvious over Sung ’026; claims 5–10 and 13–19 are obvious over the listed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We secondly conclude a POSITA would have had at least two years of experience designing and/or developing CMP technology per Patent Owner’s formulation, but we reject Patent Owner’s additional contention that this experience must include designing and/or developing pad dressers” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In his deposition testimony, Dr. Tsai testifies that the Sung ’026 patent application publication “intends to make a diamond disk that has all the protrusion[s] with identical heights and with the same orientation.” Ex. 1049, 50:2–4. Dr. Tsai also testified that “[i]n addition, [Sung ’026] also intends to control the depths of penetrating into the pad. For example, if I want to penetrate 10 micron into the pad, then the protrusion height should be at least 10 micron.” Id. at 50:10–13. So, contrary to Dr. Tsai’s Declaration testimony in Ex. 2011 ¶ 69, Dr. Tsai clarifies in his deposition testimony that Sung ’026 intends to combine three distinct aspects or embodiments. He testifies that “first one is that you need to have the same orientation, same shape so you can have the consistency; and No. 2, you would like to have the same height; and No. 3, you would like to control the penetration depths.” Ex. 1049, 51:2–6. Dr. Tsai was then asked “[s]o Sung ’026 is trying to combine all three of those together, correct?” Id. at 51:9– 10. His answer was “[t]hat’s correct, because if you can have a very good control of those, then -- and that time period back then, then you can make a very perfect diamond disk.” Id. at 51:11–13. Based on the evidence as discussed above, we determine that Sung ’026 discloses the elements and limitations in clause 1[C]. In particular, we credit Dr. Shanfield’s testimony (as summarized above) over Dr. Tsai’s declaration testimony, because Dr. Tsai’s deposition testimony essentially agreed with Dr. Shanfield that Sung ’026 discloses all the aspects recited in claim 1 together in a single embodiment.” slip op. at 48
- ExcludeMotion to exclude, deniedDenied
“Moreover, our general approach for considering challenges to the admissibility of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014). As stated in Corning, similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Id. (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (stating, in the context of reviewing an administrative determination of the National Labor Relations Board based on findings by a Trial Examiner, “We think that experience has demonstrated that in a trial or hearing where no jury is present, more time is ordinarily lost in listening to arguments as to the admissibility of evidence and in considering offers of proof than would be consumed in taking the evidence proffered . . . One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”)). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Rather than excluding evidence that is allegedly hearsay, confusing, misleading, untimely, and/or irrelevant, we will simply not rely on it or give it little or no probative weight, as appropriate, in our analysis. “In an inter partes review, we regard it as the better course to have a complete record of the evidence to facilitate public access, as well as appellate review.” Sony Computer Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 32 at 31 (PTAB Apr. 14, 2015); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly, 123 F.2d at 224 (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”)).” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“According to Patent Owner, Petitioner’s argument is that “several distinct portions of Sung ’026 purportedly, when viewed together, disclose an embodiment that satisfies the recitation of Claim Limitation [1C].” Id. at 20. Patent Owner asserts, however, that “these individual embodiments of Sung ’026—which it describes in separate portions of the reference as discrete ‘aspects’ of the invention of Sung ’026—cannot not be used collectively to satisfy the anticipation standard.” Id. (citing Net MoneyIN, 545 F.3d at 1371). Simply put, it is Patent Owner’s position that because Sung ’026 fails to disclose these various aspects in a single embodiment as Claim Limitation [1C] recites, Sung ’026 cannot anticipate claim 1. It is Petitioner’s position that Dr. Tsai’s deposition testimony supports Petitioner’s assertions that Sung ’026 anticipates independent claim 1 because the various alleged “individual embodiments” are part of a unified whole that overcome the circumstances discussed in Net MoneyIN. In his deposition testimony, Dr. Tsai testifies that the Sung ’026 patent application publication “intends to make a diamond disk that has all the protrusion[s] with identical heights and with the same orientation.” Ex. 1049, 50:2–4. Dr. Tsai also testified that “[i]n addition, [Sung ’026] also intends to control the depths of penetrating into the pad. For example, if I want to penetrate 10 micron into the pad, then the protrusion height should be at least 10 micron.” Id. at 50:10–13. So, contrary to Dr. Tsai’s Declaration testimony in Ex. 2011 ¶ 69, Dr. Tsai clarifies in his deposition testimony that Sung ’026 intends to combine three distinct aspects or embodiments. He testifies that “first one is that you need to have the same orientation, same shape so you can have the consistency; and No. 2, you would like to have the same height; and No. 3, you would like to control the penetration depths.” Ex. 1049, 51:2–6. Dr. Tsai was then asked “[s]o Sung ’026 is trying to combine all three of those together, correct?” Id. at 51:9– 10. His answer was “[t]hat’s correct, because if you can have a very good control of those, then -- and that time period back then, then you can make a very perfect diamond disk.” Id. at 51:11–13. Based on the evidence as discussed above, we determine that Sung ’026 discloses the elements and limitations in clause 1[C]. In particular, we credit Dr. Shanfield’s testimony (as summarized above) over Dr. Tsai’s declaration testimony, because Dr. Tsai’s deposition testimony essentially agreed with Dr. Shanfield that Sung ’026 discloses all the aspects recited in claim 1 together in a single embodiment.” slip op. at 48
Patent outcomesUS 9,138,862 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,138,862 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01271 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving institution denied for claims 1–21 because the petition did not show a reasonable likelihood that Belanger-Halevy taught limitation [1B].
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“variable data database’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 94; Ex. 2001 ¶¶ 68, 70). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties.” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties based on the SO-class identified for the form would have been recognized by a POSA as what the ’342 patent refers to as a universal variable map.” Ex. 1003 ¶ 98 (citing Ex. 1001, 17:48– 52). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers from multiple different websites to each other in the form database, because field identifiers are mapped to the same SO-properties associated with an SO-class.” Id. (emphasis omitted). We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’342 patent. In column 17, lines 48–52, the ’342 patent explains that fields or variables may be part of forms, and variations of the data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:48–52. While this portion of the ’342 patent indicates that forms may include variations on fields or variables, it does not describe linking or mapping variables to one another. Ex. 2001 ¶ 75 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’342 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1B]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1B] of the ’342 patent.” slip op. at 5
NonePatents in suitUS 10,262,342 - Google LLC v. Metarail, Inc.Rehearing deniedPTAB · Aug 25, 2025 · IPR2024-01270 · APJ Frances L Ippolito · IPR · Rehearing
The Board denied Google’s rehearing request, leaving in place the denial of institution because the Petition did not show a reasonable likelihood that Belanger-Halevy teaches limitation [1C] of claims 1–26.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply or sur-reply.” 37 C.F.R. § 42.71(d). The party challenging a decision bears the burden of showing the decision should be modified. Id. We address Petitioner’s rehearing arguments below.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“[m]issing, however, from Halevy’s disclosure is any teaching or suggestion that a ‘plurality of computer-readable field identifiers’ are mapped ‘to one another’ as required by claim 1.” Dec. 22. We discussed and quoted extensively from Petitioner’s expert declaration of Dr. Fox and Patent Owner’s expert declaration of Dr. Malek. Id. at 22–26 (citing Ex. 1003 ¶ 104; Ex. 2001 ¶¶ 69, 71). In reviewing the parties’ submissions, we found that: Halevy’s disclosures are consistent with Patent Owner’s arguments and Dr. Malek’s testimony that Halevy does not teach mapping fields to one another or mapping of fields to one another through SO-properties. For example, as described, in Figure 6 and Halevy as a whole, Halevy does not teach or suggest mapping or linking different keywords to one another, rather the keywords are mapped to SO-properties. slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Dr. Fox states that “Halevy’s disclosure of a form database in which corresponding fields from different forms on different websites map to the same SO-properties would have been recognized by a POSA as what the ’378 patent refers to as a universal variable map.” Ex. 1003 ¶ 108 (citing Ex. 1001, 17:42–46). Based on this conclusory opinion, Dr. Fox reasons that Halevy’s form database is a “universal variable map” that must also link computer-readable field identifiers (including parameter names) from multiple different websites to each other in the form database, because the field identifiers are mapped to the same SO-properties associated with an SO-class. Id. We observe first that Dr. Fox’s conclusion is not supported by the cited portions of the ’378 patent. In column 17, lines 42–46, the ’378 patent explains that fields or variables may be part of forms and variations of these data fields or variables “may include a source form, a destination form, a single source to many destination form, many sources to one destination form, cascading forms (e.g., a first form links to a second form which links to a third form, etc.) and so on.” Ex. 1001, 17:42–46. While this portion of the ’378 patent indicates that forms may include variations on fields or variables, it does not describe any linking or mapping of variables to one another. Ex. 2001 ¶ 76 (“[T]hat portion of the specification does not have anything to do with the definition of a “universal variable map.” Rather, it merely discusses different types of variables and fields that might appear in different types of forms.”). Dec. 28–29. We again referred to the disclosure of the ’378 patent to address evidence in the Petition relied upon by Dr. Fox to support Petitioner’s position. Id. We credited Dr. Malek’s testimony over Dr. Fox’s testimony because Dr. Malek underlined the distinctions between the asserted Belanger-Halevy prior art combination and limitation [1C]. Dec. 28–31. In short, any confusion applying the prior art Belanger-Halevy references to the claim limitation is rooted in the Petition. The Board denied the Petition because the Petition did not demonstrate a reasonable likelihood of showing that Belanger-Halevy discloses or teaches limitation [1C] of the ’378 patent.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Finally, with regard to the Reply and Sur-Reply submitted by the parties (Req. 9), we note that our Decision on Institution reviewed the parties’ discussion of claim construction, but ultimately determined that “[b]ased on our review of the preliminary record, we do not need to construe any terms expressly to reach our decision.” Dec. 11. Thus, we disagree with Petitioner that we misconstrued the mapping limitation where we did not find it necessary to construe any claim term for the purposes of our institution decision because we determined the Petition deficient for failing to meet our threshold requirements as discussed above and in detail in the Decision on Institution. See Req. 1–11.” slip op. at 7
Claim constructionPatents in suitUS 9,633,378 - Google LLC v. Brodti Inc.InstitutedPTAB · Jul 24, 2025 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 10, and 19 are obvious over Nicholas, Laidlaw, Mayadas, and Error.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Considering the subject matter of the ’898 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1002 ¶¶ 9–12), we apply the level of skill set forth above.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner submits that all terms in the Challenged Claims should be given their plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required to resolve this case. Pet. 6 (“Petitioner does not believe express claim construction is necessary to resolve this Petition.”). Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues the skilled artisan would have had various rational reasons for combining the teachings of these four references, and would have had a reasonable expectation of success in doing so. See, e.g., Pet. 18–21 (discussing reasons to combine Nicholas and Laidlaw and expectation of success in doing so), 33–37 (discussing reasons to combine Nicholas and Mayadas and expectation of success in doing so), 44–45 (discussing reasons to combine Nicholas, Laidlaw, Mayadas, and Error and expectation of success in doing so). Based on the record before us, we find Petitioner sufficiently shows that the combination of Nicholas, Laidlaw, Mayadas, and Error would have taught or at least fairly suggested to the skilled artisan the limitations of claim 1.4 Thus, for the reasons stated in the Petition (Pet. 8–51), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that independent claim 1 would have been unpatentable as obvious over the combination of Nicholas, Laidlaw, Mayadas, and Error.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,898
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.