- Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2025-00075 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the asserted combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 10. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from the other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158).” slip op. at 40
- Skill levelOther
“Principles of Law B. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.9 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 25
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00783 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the listed combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction not adoptedDecided for petitioner
“construction for “enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabling,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabling.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabling” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that “nowhere does Dua teach or describe . . . providing an access key in exchange for information held locally in the PDK’s service blocks.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing, as they rely on Patent Owner’s arguments that “the specification defines ‘local, secured information’ as information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” (PO Resp. 30), with which, as discussed above, we do not agree. Dua discloses an “RFID Tag-Reader Module” which includes “Tag Memory 322” that may be tamper resistant. See Ex. 1004 ¶¶ 105, 109. Thus, we find persuasive Petitioner’s reliance on Dua’s Tag Memory 322, which locally stores information in a tamper-resistant manner, for teaching an integrated, secure memory for storing information locally, wherein the information is secured. Id. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Dua and Giobbi ’157 teaches “an integrated, secure memory storing local, secured information,” as recited in claim 1.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158). Patent Owner does not address Petitioner’s positions on combining the teachings of Dua and Giobbi ’157 and thus Petitioner’s positions stand unopposed as a part of this trial. We have reviewed Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Dua and Giobbi ’157 as proffered in the Petition.” slip op. at 40
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 10, 2025 · IPR2025-00806 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood of success on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’517 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application must comply with the written description requirement of 35 U.S.C. § 112.” Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997)); see also In re Hogan, 559 F.2d 595, 609 (CCPA 1977). To comply with the “written description” requirement of 35 U.S.C. § 112, first paragraph, an applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (emphasis omitted). The invention claimed does not have to be described in ipsis verbis to satisfy the written description requirement. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). The question of written description support should not be confused, however, with the question of what would have been obvious to the artisan. Whether one skilled in the art would find the claimed invention obvious in view of the disclosure is not an issue in the “written description” inquiry. In re Barker, 559 F.2d 588, 593 (CCPA 1977). “A description which renders obvious the invention for which an earlier filing date is sought is not sufficient.” Lockwood, 107 F.3d at 1572.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“motivated to combine Beaumont and Hasan. Pet. 13–14. Petitioner argues that “Beaumont does not describe a specific interface for manually entering [policy and rules] preferences, Hasan discloses a GUI for exactly this type of policy specification.” Id. at 14 (citing Ex. 1003 ¶ 70). Petitioner asserts that Hasan discloses that its Java-based, “platform independent” GUI takes the form of a “familiar tree structure” and allows administrators to “configure device and service configuration data and policy information.” Id. (citing Ex. 1006, code (57), 7:7–26, 8:19–29, 18:9–20). Petitioner asserts that the combination of Beaumont and Hasan would have been straightforward, and a person of skill “would have been motivated to incorporate Hasan’s GUI so that administrators could conveniently configure preferences for Beaumont’s DNS servers through an intuitive interface.” Id. (citing, inter alia, Ex. 1003 ¶¶ 70–71; Ex. 1007 ¶ 23). Patent Owner does not present any arguments on the rationale to combine. See generally Prelim. Resp. We find that at this juncture Petitioner has presented sufficient rationale to combine Beaumont and Hasan.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We agree with Patent Owner that its understanding of a policy as a rule is consistent with the disclosure in the ’517 patent that “a policy may be created by generating a decision tree representing the ATC rules.” See Ex. 1001, 9:1–3. We do not agree with Patent Owner, however, that Beaumont in combination with Hasan does not disclose the claimed policy features as claimed. As discussed above, Petitioner relies upon Beaumont in combination with Hasan with its teachings on the use of Java-based GUIs in the form of a tree structure that allows administrators to configure device and service configuration data, as well as policy information. See Ex. 1006, code (57), 7:7–26, 8:19–29. For the policy teachings, Petitioner relies upon Beaumont’s “content provider DNS server that directs requests (traffic) according to a preference table (policy).” Pet. 15–16 (citing Fig. 1, ¶¶ 6, 17, 23). Petitioner also asserts that the Beaumont-Hasan GUI would enable an administrator to set policies for a selected content delivery server to allow setting server preferences and rules. Id. at 17–18 (citing, inter alia, Ex. 1007 ¶¶ 76–77). In support, Dr. Lin testifies that: The Beaumont-Hasan GUI would enable an administrator to select a content delivery server (e.g., in Japan) and set policies for that server. Hasan, 8:30–36, 10:25–34, 10:53–67; Beaumont, [0031]. For example, given the description in Hasan, selecting a server would bring up a menu enabling an administrator to assign the preferences shown in Fig. 3 of Beaumont. Hasan, 10:25–34; Beaumont, Figs. 2, 3, [0029]–[0031]. A POSITA would thus have recognized the combined GUI to “support[] the setting of said at least one policy using a decision tree representing rules” because it is presented in a “familiar tree structure” and would allow users to set server preferences and rules. Ex. 1003 ¶ 77 (emphasis added). Beaumont provides support for Dr. Lin’s testimony. Beaumont discloses that “rules such as selecting one [a server] based on user preferences can be used . . . [f]or example, a preference number can be assigned to each content delivery server and a destination domain.” Ex. 1007 ¶ 31. Beaumont further states that “FIG. 3 shows an illustrative example of incorporating preference numbers in a column.” Id. Thus, contrary to Patent Owner’s arguments, Beaumont discloses that rules or policies, represented by the preference number, are represented in the table shown in Figure 3 of Beaumont. Dr. Lin also testifies that in the Beaumont-Hasan combination “the GUI supports the setting of” policy is taught. Ex. 1003 ¶ 77. Hasan provides support that service policies can be modified by the use of a GUI. See Ex. 1006, 8:30–36, 10:25–34, 10:53–67. Accordingly, in the combination of Beaumont and Hasan, wherein the preference database is replaced by the GUI decision tree, Petitioner has provided sufficient evidence at this juncture that the combination of Beaumont and Hasan teaches that the GUI obtains a policy, the preference number, for the direction of network traffic, where the GUI supports the setting of the policy using a decision tree representing rules.” slip op. at 19
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,645,517 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 7, 2025 · IPR2025-00826 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–23, finding a reasonable likelihood of obviousness for claims 13–22 over Glines and Gupta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–23 of the ’112 patent. Accordingly, we institute an inter partes review of the ’112 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 12. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Mowry further attests that “A POSITA would have understood Glines’s disclosure of providing content from an origin source would have included supporting more than one origin source (e.g., more than one website or content provider[)].” Ex. 1008 ¶ 262 (citing Ex. 1002, 12:11–22 (storing replica files that originate at an origin server 40), 13:21–14:3 (requesting “example.com”)). That statement, however, goes only to what Glines might be capable of doing, not to whether one would have modified Glines to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[o]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed inventions.”). Dr. “content providers” limitation, stating that it “would have been nothing more than replicating Glines’s teaching of storing and providing content associated with one origin server, with expected results.” Ex. 1008 ¶ 263. That statement, however, is unsupported, and moreover, does not explain how such replication would occur or what results would be expected. Prelim. Resp. 25–26. At this stage in the proceeding, Dr. Mowry’s testimony amounts to a “conclusory generalization” that does not provide the “reasoned explanation” sufficient to show that a limitation missing in the cited art was taught by the knowledge in the art. Arendi S.A.R.L v. Apple, Inc., 832 F.3d 1355, 1365 (Fed. Cir. 2016).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.All claims unpatentablePTAB · Nov 5, 2025 · IPR2024-00133 · APJ Scott B Howard · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Sturman and Ho; the Board found the Ho/Jiau/Choi grounds, with and without Ellis, insufficient.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal as it better reflects the ’089 patent. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Consistent with Phillips, we begin with the “ordinary and customary meaning” of the words of the claims. Phillips, 415. F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties agree that the ordinary and customary meaning of the phrase “background object” is consistent with the dictionary definition and means an object that is “not in the foreground.” Tr. 8:10–16; PO Resp. 8–9; Ex. 2008 (AMERICAN HERITAGE DICTIONARY 2006); see also Ex. 2009 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM- WEBSTER DICTIONARY 2007); Ex. 2010 (“the part of a picture or pattern that is behind the main people or things in it” (MACMILLIAN ENGLISH DICTIONARY 2007); Ex. 2011 (“the ground or parts, as of a scene, situated in the rear (opposed to foreground)”) (RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 2005). Having determined the ordinary and customary meaning, we need only look to see if there is some reason—such as the applicant acting as a lexicographer or the ordinary and customary meaning being improperly subjective—why the ordinary and customary meaning is not controlling.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We do not find that the prosecution history demonstrates that the applicant acted as a lexicographer by “clearly set forth a definition of the disputed claim term,” or “clearly express[ing] an intent to define the term” as required by Thorner, 669 F.3d at 1365. Instead, the language in the prosecution history is consistent with the ordinary and customary meaning. That is, the applicant focuses on the location of the object relative to the area of game play, i.e., the foreground. For example, the applicant distinguishes Chu’s object as not being “background objects” because they “are featured in the forefront of [the] game play as primary objects to be manipulated or used during game play (see Chu at ¶¶ [0063]–[0065]).” Ex. 1002, 85 (emphasis added).12 The applicant continued by arguing that Chu’s objects “exist in the background, outside of the primary focus of game play and as unexpectedly interactive components, and are not themselves needed or required in order to play the game.” Id. If anything, this demonstrates an intent of the applicant to use the customary and ordinary meaning—not in the foreground—and not act as a lexicographer.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner’s argument. Under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). We have reviewed Dr. Zagal’s testimony on this subject (see Ex. 1003 ¶¶ 156–160, 163, 166, 172, 177–178) and find that it complies with our requirements. Specifically, Dr. Zagal provides his opinion and identifies specific evidence in the record that supports it. We do not find MarkForged, a nonprecedential decision, persuasive. Although MarkForged cites 37 C.F.R. § 42.65(a) as support for the proposition that expert testimony “is entitled to little to no weight [if] it merely parrots the Petition,” the rule is silent on that point. Patent Owner has not directed us to any rule or precedential decision that says that non- 17 The decision was affirmed by the Director. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Aug. 24, 2022). conclusory testimony which cites underlying factual support, such as Dr. Zagal gives in this proceeding, is entitled to no weight.” slip op. at 49
Patent outcomesUS 8,688,089 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.All claims unpatentablePTAB · Oct 27, 2025 · IPR2021-01257 · APJ Sheila F Mcshane · IPR · Remand
On remand, the Board held claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 unpatentable as obvious over the stated Newton and Reime grounds.
RulingsRemand decision- RemandOther
“On February 12, 2025, the Federal Circuit issued an opinion vacating and remanding our Final Written Decision based on the determination of the construction of the impingement term recited in the ’170 patent. Appeal Dec. 9. More specifically, the Federal Circuit found that the Board’s construction was too limited. Id. at 8–9. The Federal Circuit found that As properly construed, in the context of the challenged claims, ‘impingement of an electromagnetic radiation spot’ must include ‘reflected, projected, and interrupted or blocked radiation.’ In other words, when a finger or non-light-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied. Contrary to the Board’s construction, as articulated by Power2B on appeal, the ‘electromagnetic radiation spot on . . . [the] interactive surface element’ does not ‘require[that] radiation imping[e] on the surface element’ and, hence, does not exclude interrupting or blocking radiation. Appeal Dec. 9 (citations omitted).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“impingement of an electromagnetic radiation spot” includes “reflected, projected, and interrupted or blocked radiation” and “when a finger or nonlight-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied.” Appeal Dec. 9. Under this construction, we determine that Petitioner has demonstrated that Newton teaches this claim limitation. More specifically, Newton discloses that a user touch interrupts beams of electromagnetic radiation over certain spots over a surface, which provides an output. See Ex. 1012 ¶¶ 13, 25; see also Ex. 1002 ¶ 72. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner that the claims do not require a detector assembly to be physically separate from the interactive surface element. The language of the claims does not require this, nor is there any disclosure in the ’170 patent specification that indicates that separation of these elements is required. Patent Owner refers to certain embodiments that have separate structures, but we decline to import this as a requirement to the claim term. We also agree with Petitioner that the ’170 patent broadly views what it means to be “at an edge,” and that can include being behind, about, or along an edge within its scope. See Ex. 1001, 55:63–56:2.” slip op. at 24
Patent outcomesUS 9,317,170 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,317,170 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information 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 ’504 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
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 ’403 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, 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. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - 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
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.