- Savant Technologies LLC D/B/A GE Lighting / Elong International USA Inc. et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Sep 14, 2026 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–11, 18–20, 23–25, and 28 are unpatentable as obvious over the two combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“¶ 39). Petitioner further relies on Stokes to teach an average particle size that preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.” Id. at 26–27 (citing Ex. 1108, 7:1–4). Petitioner argues that “a POSA would have been motivated to apply this principle to Krummacher, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 27 (citing Ex. 1102 ¶ 237). Petitioner notes that “[c]onversion of blue light to yellow light is improved by maximizing the scattering of blue light.” Id. In addition, Petitioner asserts that “[u]niformity is improved by preferentially scattering the concentrated light from the blue-light LED chip instead of the disperse light emitted by the phosphor.” Id. at 28 (citing Ex. 1102 ¶ 237). Petitioner contends that “[a] POSA would have had a reasonable expectation of success applying this principle to Krummacher, because the relevant particle size range includes the range disclosed by Krummacher.” Id. Petitioner argues that “[a] POSA would have recognized selecting an average particle size as a design decision to be made based on a number of factors, including the light scattering properties of the particles, and well within the skill of the art.” Id. (citing Ex. 1102 ¶ 238). We find this explanation and the supporting testimony of Dr. Doolittle well-reasoned and supported and entitled to significant weight. Thus, we find that Petitioner has shown by a preponderance of the evidence that the combination of Krummacher and Stokes teaches limitation 1[c], and that a person of ordinary skill in the art would have been motivated to combine the references in the manner proposed.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“¶ 39). Petitioner further relies on Stokes to teach an average particle size that preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.” Id. at 26–27 (citing Ex. 1108, 7:1–4). Petitioner argues that “a POSA would have been motivated to apply this principle to Krummacher, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 27 (citing Ex. 1102 ¶ 237). Petitioner notes that “[c]onversion of blue light to yellow light is improved by maximizing the scattering of blue light.” Id. In addition, Petitioner asserts that “[u]niformity is improved by preferentially scattering the concentrated light from the blue-light LED chip instead of the disperse light emitted by the phosphor.” Id. at 28 (citing Ex. 1102 ¶ 237). Petitioner contends that “[a] POSA would have had a reasonable expectation of success applying this principle to Krummacher, because the relevant particle size range includes the range disclosed by Krummacher.” Id. Petitioner argues that “[a] POSA would have recognized selecting an average particle size as a design decision to be made based on a number of factors, including the light scattering properties of the particles, and well within the skill of the art.” Id. (citing Ex. 1102 ¶ 238). We find this explanation and the supporting testimony of Dr. Doolittle well-reasoned and supported and entitled to significant weight. Thus, we find that Petitioner has shown by a preponderance of the evidence that the combination of Krummacher and Stokes teaches limitation 1[c], and that a person of ordinary skill in the art would have been motivated to combine the references in the manner proposed.” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“Finally, we do not agree with Patent Owner that “quantum efficiency” would have dissuaded a person of ordinary skill from making the combination. PO Resp. 36–38. To begin with, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021). Here, as demonstrated by, at least, Shimizu and Stokes, blue LEDs in this wavelength range were known to work as light sources for white-light LEDs. See Pet. 30–31. Additionally, we find persuasive Petitioner’s evidence that a person of ordinary skill in the art would not have been concerned solely with quantum efficiency, but also with overall luminous efficacy of a complete white LED package. Reply 9. As Dr. Schubert’s textbook explains, A fundamental drawback of UV pumped white LEDs is the energy loss (Stoke’s shift). The potential luminous efficacy of UV pumped white LED lamps is, therefore, markedly lower than that of white sources based on a blue LED exciting a yellow phosphor. Ex. 2014, 358–59; see also Ex. 1148, 87:5–88:4 (acknowledging Stokes shift). Thus, the evidence shows that, whatever gain in quantum efficiency a lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, 437 F.3d at 1165. Indeed, Petitioner has shown several references—including, Shimizu and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Krummacher, Stokes, and Shimizu. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Krummacher, Stokes, and Shimizu with a reasonable expectation of success.” slip op. at 43
Patent outcomesUS 8,614,539 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,614,539 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged original claims unpatentable as obvious and denied the contingent motion to amend substitute claims 30–49.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Motion to Amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 for claims 30 and 32–49. We further find that Patent Owner has not met the statutory and regulatory requirements for proposed claim 31. Accordingly, we address below whether any of the proposed substitute claims have been shown to be unpatentable.” slip op. at 86
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision
The Board held challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious, and granted the motion to amend for substitute claims 30–49.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted in part
“5. Conclusion For the reasons set forth above, we determine that Patent Owner’s Motion to Amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 for claims 30 and 32–49. We further find that Patent Owner has not met the statutory and regulatory requirements for proposed claim 31. Accordingly, we address below whether any of the proposed substitute claims have been shown to be unpatentable.” slip op. at 86
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,604,678 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious and granted the motion to amend for substitute claims 30–49.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21
- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the understanding of a person of ordinary skill in the art (“POSITA” or “POSA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d Relying on the declaration testimony of its expert, Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’678 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 5–6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’678 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” PO Resp. 24–25. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’678 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Savant Technologies LLC D/B/A GE Lighting And Ledvance LLC / Savant Technologies LLC D/B/A GE Lighting, Elong International USA Inc., And Xiamen Longstar Lighting Co. Ltd v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged original claims unpatentable as obvious and granted the contingent motion to amend for substitute claims 30 and 32–49; substitute claim 31 was denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21
- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success. 4. Summary We have reviewed Petitioner’s contentions regarding claims 1–3, 6, 9, 10, 16–21, and 25 (Pet. 19–53), and find that Petitioner has shown by a preponderance of the evidence that Basin-2007 and Basin-2005 teach the limitations of those claims, and that there would have been a motivation to combine the references in the manner suggested with a reasonable considerations does not outweigh the strong showing of obviousness. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claims 1–3, 6, 9, 10, 16–21, and 25 would have been obvious over Basin-2007 and Basin-2005.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“1. Nexus In order for secondary considerations to be awarded “substantial” slip op. at 22
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 28, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–3, 6, 7, 9, 10, 16–21, 25, 26, and 29 are unpatentable; substitute claims 30–49 were not reached.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art We consider the asserted ground of unpatentability in view of the” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“E. Credibility of Dr. Doolittle Patent Owner argues that we should give no weight to Dr. Doolittle’s testimony because, “[o]n cross examination, Prof. Doolittle repeatedly contradicted himself, dodged questions, and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions.” PO Resp. 25. Patent Owner raises two major complaints about Dr. Doolittle. First, Patent Owner argues that he took inconsistent positions by asserting in these IPR proceedings that the claims were entitled to their plain and ordinary meaning, while in the parallel district court proceeding, asserting that certain claim terms were indefinite. Id. at 26–28. Second, Patent Owner argues that Dr. Doolittle “repeatedly dodged questions and tried to shoehorn new and nonresponsive opinions into his answers to Patent Owner’s questions,” and that “[d]uring cross examination Patent Owner was forced to object to Prof. Doolittle’s nonresponsive answers no less than eighteen times.” Id. at 28. We strongly disagree with Patent Owner’s characterization of Dr. Doolittle’s testimony. We have reviewed the entirety of both of Dr. Doolittle’s depositions. We are impressed with his forthrightness, candor, and good humor in the face of Patent Owner’s counsel’s aggressive questioning. Contrary to Patent Owner’s assertions, we find that his testimony was well-reasoned, forthright, honest, and entitled to significant weight. Dr. Doolittle explained the different claim construction positions We also strongly disagree that Dr. Doolittle’s answers were nonresponsive or “evasive” as Patent Owner argues. Patent Owner’s numerous attempts to “strike” portions of his testimony belie Dr. Doolittle’s efforts to honestly and in good faith respond to Patent Owner’s counsel’s questions. Ex. 2025, 22:10–23:15, 25:9–26:14, 30:14–22, 40:3-9, 58:12–59:1, 60:18–61:13, 65:1–10, 83:15–84:16, 92:15–95:20, 96:18–99:9, 102:22–106:16, 135:3–136:22. An answer is not “non-responsive” simply because it does not conform to the conclusion you want or undermines the logic underlying your questioning. Dr. Doolittle explained his answers and addressed the issues Patent Owner asked about. Accordingly, we decline Patent Owner’s invitation to give Dr. Doolittle’s testimony no weight. Instead, we assess Dr. Doolittle’s testimony on a case-by-case basis as discussed below.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“lower wavelength might offer, there were other drawbacks that a person of ordinary skill would have to balance. But “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Indeed, Petitioner has shown several references—including, Basin-2005, Shimizu, and Stokes—that made this tradeoff. Moreover, “[o]bviousness does not require absolute predictability of success. . . . [A]ll that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988). We find that the prior art of record demonstrates that a person of ordinary skill in the art at the time of the invention would have such an expectation in making the combination of Basin-2007 and Basin-2005. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that there would have been motivation to combine Basin-2007 and Basin-2005 with a reasonable expectation of success.” slip op. at 41
- Obviousness (§103) › Objective indicia / secondary considerationsDecided for petitioner
“7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he 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 . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id.” slip op. at 32
Patent outcomesUS 7,916,180 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Jul 21, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, 30, and 33 are unpatentable over Choi, Labaziewicz, and Yu under § 103; claims 1–3, 10–12, 24, 25, and 32 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he 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 . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We do not agree with Petitioner’s arguments based on retrieval of data from CCD 18A and CCD 18B. Although Matsushima’s CCD drive circuits 20A and 20B are driven synchronously by timing generator 28 (see Ex. 1007 ¶ 27), Matsushima discloses that “accumulated signal charges are retrieved by CCD drive pulses applied by CCD drive circuits 20A and 20B, and are sequentially output from CCD 18A and CCD 18B as voltage signals (analog image signals) corresponding to each signal charge” (see Ex. 1007 ¶ 23) (emphasis added). In other words, regardless of whether CCD drive circuits 20A and 20B are driven synchronously by timing generator 28, Matsushima discloses that voltage signals corresponding to the accumulated 8 Petitioner’s citation erroneously includes ¶¶ 34–36 of Exhibit 1069. CCD 18A and CCD 18B sequentially––not output at the same time or simultaneously.” slip op. at 30
- Strike new argumentNew argument disregardedDecided for patent owner
“argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).9 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. Petitioner clarifies that the Petition does not argue inherency. See Pet.” slip op. at 33
Patent outcomesUS 7,916,180 mixed§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jul 21, 2026 · IPR2025-00342 · APJ Scott A Daniels · IPR · Final written decision
Claims 1, 2, and 6–11 were not shown unpatentable because the cited combinations did not teach guiding a vehicle to a fixed destination or calculating the claimed optimized path from stored destination data.
RulingsFinal written decision- Adverse judgmentOther
“reserves consideration of discretionary issues to the Director. The relief Patent Owner requests is that the panel exercise discretion to terminate these proceedings based on actions taken in related district court proceedings as done in Hulu. Supp. PO Resp. 2. Because the basis for Patent Owner’s requested relief is discretionary, the panel lacks the authority to grant the request. In this regard, the present situation is different from that in Hulu and Sinclair Pharma Limited v. Hydrafacial LLC (IPR2025-00145, Paper 41, Squires, Feb. 12, 2026), cited by Patent Owner. In those cases, the 9 Available at: https://www.uspto.gov/sites/default/files/documents/Director_Institution_of _AIA_Trial_Proceedings.pdf (“Director Institution Memo”). Director ordered de-institution, not the panel. The Director has not made such a determination or delegated such authority to the panel in these proceedings. Indeed, as noted above, Patent Owner has already briefed, and the Director has previously ruled on, discretionary denial issues. Paper 10. Accordingly, we decline to vacate our Institution Decision and focus our analysis on the merits of the case as presented by the parties.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We consider the asserted grounds of unpatentability in view of the understanding of a person of ordinary skill in the art. In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Petitioner asserts that ordinarily skilled artisans “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related subject, and four years of work experience in image processing, automated vehicle control/navigation, or a related field.” Pet. 7. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’805 patent, and we adopt it here. See generally, PO Resp. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner
“Here, in our opinion, Patent Owner has shown that the Specification describes the potential destinations of a vehicle as limited to physically fixed, non-transient objects or features. PO Resp. 18–21. As an initial matter the ’805 patent is titled “Docking Assistant” and explains its purpose for guiding a “vehicle to a stop at a specific location.” Ex. 1001, codes (53), (57), Abstract. We acknowledge that claim 1 does not expressly recite that “at least one potential destination” is a fixed destination or location. See id. at 7:61– 63 (Claim 1 requiring “extracting from the acquired image data positional parameters of at least one potential destination relative to the motor vehicle;”). Yet, in the context of the relatively brief specification, there is no explanation, example, or embodiment which reasonably extends the meaning of “destination” or “potential destination” beyond a fixed location. The ’805 patent describes in the Abstract that [m]any day-to-day driving situations require that an operator of a motor vehicle guide the motor vehicle along a specific course and bring the vehicle to a stop at a specific location, for example in a parking bay or at a loading platform. Id. at code (57) Abstract. The Abstract explains in the next sentence that “[t]o assist a vehicle operator in such situations, a method and a suitable device for implementing this method, include detecting the potential target objects in the image data of an image sensor and identifying the potential target objects as potential destinations in a multi-stage exclusionary method.” Id. (emphasis added). Nowhere in this initial description of the invention, nor anywhere else that Petitioner points to, is there is expansion of the “specific location” or “potential destination” beyond a docking station or parking bay. Of course, the claim is not limited to these examples, as it would be inappropriate to read in such limitations from the Specification. See Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 771 (Fed. Cir. 2018) (“Acceleration again attempts to import structural limitations into claims lacking those limitations. . . . While the specifications discuss a broadcast channel overlaying a network, the claims at issue are not so limited.”).” slip op. at 14
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Patent Owner’s declarant, Dr. Majumder, testifies to the contrary that “[r]ead as an engineer, the ‘805 patent’s present invention is framed around guiding a vehicle to fixed, physical destinations (exemplified by docking stations and similar structures) without fiducials or special markings.” Ex. 2010 ¶ 81. Considering Broggi, Dr. Majumder testifies further that “[a] moving object, such as a preceding car, is not a valid destination under the ‘805 Patent, because it is not a stationary location at which the host vehicle can be guided to stop. To treat such a vehicle as a ‘potential destination’ would lead to collision, not guidance.” Id. ¶ 86. As discussed in our claim construction, given a plain reading of claim 1 in light of the Specification, our understanding of the ’805 patent is consistent with Dr. Majumder’s testimony. We agree that Broggi is directed expressly to the platooning of moving vehicles, and not physically fixed destinations as the proper claim construction requires. Because Broggi does not disclose the use of physically fixed “potential destinations” as required, e.g., in limitations [1.2]–[1.3], and neither Huttenlocher nor Brady are relied upon to overcome this deficiency, Petitioner has not met its burden of persuasion to show by a preponderance of the evidence that claim 1 would have been obvious over Broggi in view of Huttenlocher and Brady.” slip op. at 27
Patent outcomesUS 7,336,805 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 7,336,805 - Tesla, Inc. v. Intellectual Ventures II LLCAll claims unpatentablePTAB · Jul 6, 2026 · IPR2025-00221 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–8 are unpatentable as obvious: claims 1, 2, 5, and 6 over Dateki; claims 3 and 7 over Dateki and Mate; and claims 4 and 8 over Dateki and Chitrapu.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“[w]ould have been someone knowledgeable and familiar with the wireless communications systems that are pertinent to the ’889 patent. That person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems. Pet. 18–19 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s contention as to the level of ordinary skill in the art. See generally, PO Resp. Based on this record, and because there is no dispute, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’889 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“do not recite, as Patent Owner interprets it, that the extracted power control information upon which the UE bases its transmission of a signal be “the same” power control information extracted from the control message. PO Resp. 25. Where the claim is clear on its face, we decline to inject “the same” into the construction, that is, words that are not actually in the claim. Yet considering the plain language of claim 1, we mostly agree with Patent Owner’s interpretation, namely that “a transmission power level based on the extracted power control information,” as required in limitation [1.6] includes power control information extracted from “the control message,” in limitation [1.5] having “power control bits for a plurality of UEs” as recited in limitation [1.4]. Ex. 1001, 10:2–19. We understand and interpret the concluding limitation in method-type claim 5 in the same manner as limitation [1.6].” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“do not recite, as Patent Owner interprets it, that the extracted power control information upon which the UE bases its transmission of a signal be “the same” power control information extracted from the control message. PO Resp. 25. Where the claim is clear on its face, we decline to inject “the same” into the construction, that is, words that are not actually in the claim. Yet considering the plain language of claim 1, we mostly agree with Patent Owner’s interpretation, namely that “a transmission power level based on the extracted power control information,” as required in limitation [1.6] includes power control information extracted from “the control message,” in limitation [1.5] having “power control bits for a plurality of UEs” as recited in limitation [1.4]. Ex. 1001, 10:2–19. We understand and interpret the concluding limitation in method-type claim 5 in the same manner as limitation [1.6].” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“where packet transmission is conducted, “the transmission power control information is transmitted via the HS-SCCH as second transmission power control information TPCC at a shorter periodic cycle.” PO Resp. 11 (quoting Ex. 1005, 13:11–13). But in context, after describing transmission of TPCC 1 on F-DPCH, Dateki says “[a]lso, in a case where packet transmission is conducted, the transmission power control information is transmitted via the HS-SCCH as second transmission power control information TPCC at a shorter periodic cycle.” Ex. 1005, 13:8–13 (emphasis added). We find it significant that the word “also” is used by Dateki, here, to describe the relationship of TPCC 1 and TPCC 2 as used together. If the intent was to transmit and use only TPCC 2 on HS-SCCH when data packets are transmitted on HS-PDCH, it would have made more sense to say “alternatively,” and otherwise make clear that only TPCC 2 is transmitted. But they did not. On the other hand, the inventors certainly understood how to explain when TPCC 2 is not transmitted. For example, Dateki makes clear that in certain embodiments TPCC 2 is unnecessary and “transmission power control may be effectively realized without including transmission power control information in the HS-SCCH.” Id. at 14:33–35. The same cannot be said for TPCC 1.” slip op. at 30
Patent outcomesUS 11,664,889 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,664,889
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.