- PTAB · Mar 19, 2025 · IPR2024-01358 · APJ William V Saindon · IPR · Institution
The Board instituted IPR of claims 1–24, finding a reasonable likelihood that claim 1 would have been obvious over Jüschke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’704 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“1. “deployment scenarios” Claim 1 recites a machine learning model that “includes model parameters associated with values corresponding to one or more deployment scenarios.” Ex. 1001, 14:23–25. The ’704 patent provides a list of “deployment scenarios” that includes “a cellular base station . . . in an in-line mode.” Id. at 2:39–41; see also id. at 2:38–65 (entire list). The “in-line mode” is shown in Figures 6A and 7A, in which machine learning model 103 is placed “between an input 601 and an amplifier 603.” Id. at 10:38–42, 10:47–50. Figure 6A depicts the in-line mode and is reproduced below:” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“associated with the base station as claimed, focusing on the words “associated with.” Prelim. Resp. 26–28. Patent Owner argues that Petitioner’s position is that the model is “implemented within” the base station, but that the claim requires the model to be “associated with” the base station. Id. at 27. On this record, with no claim construction offered, we fail to see how Patent Owner construes a model “implemented within,” i.e., used in, a base station to not also be “associated with” the base station. That is, it would seem that a model used in a base station is associated with that base station. Accordingly, we do not find Patent Owner’s argument persuasive on this preliminary record.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,018,704 - PTAB · Feb 25, 2025 · IPR2024-01315 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1 and 3 on all three asserted obviousness grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Further, when instituting an inter partes review, we “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). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design.” Pet. 6 (citing Ex. 1002 ¶¶ 34– 37). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Dean Neikirk. Ex. 1002 ¶¶ 34–37. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. See Prelim. Resp. 1. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7; see Prelim. Resp. 1. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“E. Asserted Obviousness of Claims 1 and 3 over Anzai and Yamazaki Petitioner argues that claims 1 and 3 would have been obvious over Anzai and Yamazaki. Pet. 47–57. Petitioner presents evidence indicating that the Anzai and Yamazaki combination teaches the limitations of claims 1 and 3, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Patent Owner does not present any substantive arguments regarding this asserted ground. See Prelim. Resp. 1. On this record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1 and 3 would have been obvious over Anzai and Yamazaki. F. Asserted Obviousness of Claims 1 and 3 over Anzai and Yamada Petitioner argues that claims 1 and 3 would have been obvious over Anzai and Yamada. Pet. 57–63. Petitioner presents evidence indicating that the Anzai and Yamada combination teaches the limitations of claims 1 and 3, and that a person of ordinary skill in the art would have had reason to combine these references. Id. Patent Owner does not present any substantive arguments regarding this asserted ground. See Prelim. Resp. 1. On this record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1 and 3 would have been obvious over Anzai and Yamada.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,477 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01206 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that the challenged claims would have been obvious under the asserted Yerazunis- and Ely-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution of this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 9,912,914. As all the claims of the ’471 patent are challenged in this proceeding, Petitioner’s stipulation applies to the entirety of the ’471 patent. In view of Petitioner’s stipulation, the substantial number of issues to be addressed in the District Court, Patent Owner’s acknowledgement that Petitioner’s expert report in the parallel litigation repeats the assertions in this Petition, and the potential reduction of issues to be tried in the parallel litigation, our weighing of the factors is against exercising discretion to deny institution. As discussed below, we also recognize that Petitioner’s contentions have merit. In consideration of the above, we decline to exercise discretion to deny institution. We now address the substantive issue presented in the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 13 (the “challenged claims”) of U.S. Patent No. 9,485,471 B2 (“the ’471 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6. 35 U.S. C. § 314 provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s arguments that an ordinarily skilled artisan would not have had reason to combine the teachings of Yerazunis and Fiore are similar to its substantive arguments that the references fail to disclose the limitations of the claims. We address these arguments in the context of the claim limitations separately below. We note that Petitioner does not rely on Fiore as disclosing all the claim limitations, and instead cites Fiore as disclosing a memory management structure applicable to the system disclosed by Yerazunis. In the context of the claimed subject matter, we determine that, for purposes of this Decision, Petitioner has demonstrated a person of ordinary skill would have had reason to apply the memory mapping structure from being overwritten, as taught by Yerazunis.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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 4 U.S. Patent 7,158,167, issued Jan. 2, 2007 (Ex. 1017) 5 U.S. Patent Publication No. 2002/191952, published Dec. 19, 2002 (Ex. 1009) 6 U.S. Patent Publication No. 2004/008255, published Jan. 15, 2004 (Ex. 1019) 7 EP 1,064,783, published June 4, 2003 (Ex. 1015) 8 U.S. Patent 5,982,418, issued Nov. 9, 1999 (Ex. 1020) description of a person of ordinary is commensurate with the subject matter of the ’471 patent and the references, we apply Petitioner’s description for purposes of tie Decision.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,485,471 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01207 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that at least one claim is unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution on this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 8,692,882; and IPR2024-01208, challenging claims 1–23 of U.S. Patent” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons arguments do not directly address the specific combination proposed by Petitioner nor the specific motivations provided by Petitioner. For example, as explained further below in our analysis of claim 1, the gun embodiment of Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’s video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’s gun implementation in which individual segments are stored in the circular buffer. See Pet. 28 (“Yerazunis does disclose that in a gun camera embodiment, ‘the head pointer 104 and the tail pointer 102 . . . defining the area(s) of the circular buffer memory, are stored in a table to allow later retrieval of the video data pertaining to each firing of the gun.’” (quoting Ex. 1017, 17:50–56)); see also Pet. 30–32, 38–39.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“of Yerazunis in combination with Fiore. On this record, Petitioner has demonstrated the similarities in the data recording systems of Yerazunis and Fiore. Petitioner asserts a reasonably sufficient basis for establishing the “specified frame data associated with [the] firing event” to be preserved as the disclosure of a designated segment that is write-protected. Based on the current record, we find Petitioner’s evidence more persuasive than Patent Owner’s assertion that Yerazunis preserves the entire buffer—not designated segments. Again, Petitioner admits Yerazunis does not expressly refer to “indexing write-protected segments as second files” but further establishes with sufficient basis that a person of ordinary skill in the art would understand the tagging features of Yerazunis aligns with the concept of indexing. Further, Petitioner shows that eventually it will be necessitated to locate or retrieve the data, providing further motivation for indexing, which is not only disclosed in Fiore, but demonstrated as well known in the art. See Pet. 28–29. Petitioner demonstrates the combination of Fiore and thus, on the current record, we are not persuaded by Patent Owner’s argument that Yerazunis only preserves post-recording data. Patent Owner further does not provide sufficient basis of reasoning that the “memory designation scheme” of Yerazunis which uses “unused block[s] of memory” establishes there is no write-protected segment. In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate that person of ordinary skill in the art would have had a rational basis to combine the teachings of Yerazunis and Fiore and this combination teaches these limitations of element 4.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,692,882 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01208 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–23 on all four §103 grounds, finding a reasonable likelihood of success based on Yerazunis or Ely, with Fiore and Lewellen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–17. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 23 (the “challenged claims”) of U.S. Patent No. 9,912,914 B2 (Ex. 1031, “the ’914 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6, which provides that an inter partes review may not be instituted unless the information presented in the Petition “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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contentions Concerning Reasons to Combine Teachings of Yerazunis and Fiore Noting that Yerazunis and Fiore both concern recording devices with circular buffers that preserve data before and after a trigger event, Petitioner contends that an ordinarily skilled artisan would have had reason to combine the teachings of the references to incorporate into Yerazunis the benefits Fiore articulates concerning its file-based storage approach in such systems. Pet. 21. Petitioner emphasizes Fiore’s discussion of how implementing a circular buffer as a memory mapped file that indexes event data combines the access speed of the RAM memory with the large capacity of a disk file, making the indexing of data in memory mapped file 110 transparent to the circular buffer’s access objects. Id. at 21–22. Petitioner also emphasizes that an ordinarily skilled artisan would have had a reasonable expectation of success, given Fiore’s detailed disclosure of applying its techniques in a system like that of Yerzunis. Id. at 22 (citing Ex. 1003, Sarhan Decl. ¶¶ 168–172).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s proposed description of a person of ordinary is commensurate with the subject matter” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,912,914 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01205 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–18. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”:” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . 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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’034 patent and we exercise our discretion to institute inter partes review as to all the challenged claims of the ’034 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons provided by Petitioner and summarized above. Several of Patent Owner’s arguments do not directly address the specific combination proposed by Petitioner nor the specific motivation provided by Petitioner. For example, Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’ video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’ gun implementation in which individual segments are stored in the circular buffer. See Pet. 32 (citing Ex. 1017, 3:25–38, 8:26–30, 15:9–13, 17:48–59).” slip op. at 21
- Skill levelSkill level board ownOther
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003 ¶¶ 24–25). Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 24–25). Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,034 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1–18 are unpatentable as obvious over Cook and Bennett because the combination teaches the claimed wireless power system and provides reasons to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’687 patent, we apply the pre-AIA version of § 103. wireless energy transfer,” but “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 37– 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner “does not disagree with Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 9–10. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. Confirm compatibility of the resonators and provide authorization for initiation of transfer of power Patent Owner proposes construing the phrase “confirm compatibility of the resonators and provide authorization for initiation of transfer of power” in independent claims 1, 7, and 13 to mean “verify that parameters of the resonators will permit power transfer and provide authorization prior to initiating the transfer of power.” PO Resp. 7. Patent Owner argues that the claim language “recit[es] two functions—confirming resonator compatibility and providing authorization,” which “indicates that confirming compatibility of the resonators must be different than providing authorization.” Id. at 7–8. Patent Owner also argues that the specification distinguishes “the confirmation of resonator compatibility” from “merely verifying that the vehicle to be charged is authorized to receive charging” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“a. Bennett’s resonant frequency tuning The evidence of record indicates that it would have been obvious to implement Cook’s wireless charging system using Bennett’s resonant frequency tuning. Ex. 1003 ¶ 114; Pet. 21–22. Specifically, Cook teaches that its wireless charging system requires “the right frequency” to charge a vehicle’s battery. Ex. 1007 ¶ 12; Pet. 24. But Cook does not teach how to adjust the resonant frequency of its wireless charging system to work with different vehicles. Ex. 1003 ¶ 114; Pet. 24. As discussed above, Bennett teaches tuning the power transmitting unit’s resonant frequency to the target electronic device’s requested resonant frequency. Ex. 1005 ¶¶ 37–38, 57– 58, Fig. 3. A person of ordinary skill in the art would have recognized that Bennett’s resonant frequency tuning would improve Cook’s wireless charger by making it compatible with different vehicles. Ex. 1003 ¶ 114; Pet. 24– 25. In addition, a person of ordinary skill in the art would have reasonably expected the combination to work because Bennett explains that its techniques apply generally to battery-powered devices. Ex. 1003 ¶ 121; Ex. 1005 ¶ 3; Pet. 28–29.” slip op. at 20
- Strike new argumentNew argument consideredDecided for petitioner
“in the Reply is an improper new argument. PO Sur-reply 15. We disagree. The Petition expressly relies on Bennett’s resonant frequency tuning as teaching the compatibility limitation. Pet. 49–50 (citing Ex. 1005 ¶¶ 37–38, 41). Patent Owner responds by arguing that Bennett’s resonant frequency tuning is an optional step that occurs after initiating power transfer. PO Resp. 23–24. In the Reply, Petitioner responds by pointing to Bennett’s Figure 3 as evidence that the resonant frequency tuning occurs before initiating power transfer. Pet. Reply 18–21 (citing Ex. 1005 ¶¶ 37, 57, Fig. 3; Ex. 1036 ¶¶ 28–29). Petitioner’s argument in the Reply properly relies on the same feature (i.e., Bennett’s resonant frequency tuning) and the same embodiment (i.e., the system shown in Figures 1 and 3) as the Petition. Ex. 1005 ¶¶ 29, 37–38, 57 (“FIG. 3 is a flowchart illustrating resonant power transfer operations performed using the power system of FIG. 1 . . . .”). Thus, Petitioner’s reliance on Bennett’s Figure 3 is a proper response to arguments in Patent Owner’s Response, not an improper new theory of unpatentability. See Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1008 (Fed. Cir. 2023) ([T]he arguments and evidence in the reply must not be part of a new theory of unpatentability” and “must be responsive to the patent owner’s contentions or the Board’s institution decision.”).” slip op. at 16
Patent outcomesUS 8,912,687 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationAll claims unpatentablePTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision
Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8
Patent outcomesUS 8,461,719 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,461,719 - PTAB · Feb 12, 2025 · IPR2024-01131 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted IPR of claims 1–6 and 8–14 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“If, at the time of the institution decision, the district court has not issued orders related to the patent at issue in the petition, this fact weighs against exercising discretion to deny institution . . . .” Fintiv, Paper 11, 10. That appears to be the case here. Although the litigation may have been pending for a year, the parties have not yet begun the court’s claim-construction process, are in the early stages of fact discovery, and the court has not issued any substantive orders regarding the ’801 patent. See Ex. 2001, 4–5. Because the parties’ and the court’s investment in the parallel proceeding is not extensive, this factor weighs against exercising our discretion to deny institution. slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the current record and the parties’ contentions, we determine that Petitioner has shown a reasonable likelihood of prevailing in showing that Kwak anticipates claim 9. We have reviewed Patent Owner’s arguments in opposition to this ground and, on this preliminary record, find them unpersuasive.” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“that the combination of interlayer 160, gate insulating layer 140, and buffer layer 120 (plus additional layers in display area 200 of Kwak’s flat-panel display) cannot be considered the claimed predetermined material layer, but rather that Petitioner has not explained why they should be so considered. See Prelim. Sur-reply 2 (“[I]t is presumptively permissible to have multiple predetermined material layers as claimed . . . . [b]ut the Petition included no theory or explanation why the three to six separate layers in its theory form a predetermined material layer.”). We agree that Petitioner does not offer an express construction of “predetermined material layer.” At this point, however, we find little in either the claims, the Specification, or elsewhere in the record that limits the meaning of “predetermined material layer” in a way that would exclude the combination of interlayer 160, gate insulating layer 140, and buffer layer 120. The Specification does not expressly define “predetermined material layer” or “predetermined material,” and we have found no evidence in the record that “predetermined material layer” or “predetermined material” has a known meaning in the art, or that otherwise supports Patent Owner’s reading of those terms. Further, we find nothing in the claims or Specification that limits “material” to any specific materials. The Specification provides several nonlimiting examples of materials that can be used if the predetermined material layer is to serve as a passivation layer, and several other (or additional) materials that can be used if the predetermined material layer is to serve as a metal electrode layer. Ex. 1001, 2:47–55. Thus, in view of the Specification, a “predetermined material layer” would simply be a layer made of one or more predetermined materials. In light of Patent Owner’s acknowledgement that “a layer” can mean “one or more layers,” the term “predetermined material layer” would encompass the combination of interlayer 160, gate insulating layer 140, and buffer layer 120.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had a Bachelors’ degree in electrical or mechanical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design or other relevant industry experience” but “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2 (citing Ex. 1003 ¶¶ 34–37). Patent Owner does not offer an alternative definition. See generally Prelim. Resp. The level of ordinary skill in the art is evidenced by the references themselves. 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). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art.” slip op. at 16
Claim constructionDiscretionary denialcites Phillips · KSRPatents in suitUS 7,226,801 - PTAB · Jan 27, 2025 · IPR2024-01179 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–25; it found a reasonable likelihood that claims 1, 2, 4–11, 16–20, and 22–24 are obvious over Waldner and Dynatek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find” slip op. at 8
§ 103 obviousnessPatents in suitUS 11,780,689
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.