• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentable
  PTAB · Aug 31, 2026 · IPR2023-00199 · APJ John A Hudalla · IPR · Final written decision

  Claims 1, 4, 7, and 8 are unpatentable as obvious over Na and Kim (claim 1) and Na and Hong (claims 4, 7, and 8); other grounds were not reached.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Manufacturing Resources International, Inc. (“Patent Owner” or “MRI”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Taking into account the arguments presented by Patent Owner in the preliminary record, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on June 20, 2023, as to all challenged claims and all grounds of unpatentability presented in the Petition. Paper 9 (“Dec. on Inst.”).” slip op. at 2

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner’s Motion to Strike Petitioner moves to strike Exhibits 2055, 2056, and 2058–2061 as being improper new evidence filed by Patent Owner with its Sur-reply in contravention of 37 C.F.R. § 42.23(b). Exclude Mot. 1–5. We have not relied on any of these exhibits in rendering this Decision. Accordingly, we dismiss as moot Petitioner’s Motion to Strike.” slip op. at 73

  • Skill levelSkill level board ownDecided for patent owner

    “record, we adopted the following definition of the level of ordinary skill in our Decision on Institution: [A] POSITA would have had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic displays, including the thermal management, product design issues, and failure modes, associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes, associated with electronic displays. Dec. on Inst. 11. The parties’ positions have not changed since the time of institution, and we discern no reason to change the definition. Thus, we apply the same definition. We are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’595 patent and the asserted prior art. Notwithstanding, we note that our analysis would not change if we adopted either party’s proposed definition in toto.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “appear nowhere outside of the claims in the ’595 patent. This fact alone tends to undermine Patent Owner’s suggestion that the “posterior surface” must be distinct from the “rear side.” In addition, Patent Owner’s cited portions of the Specification merely refer to the “posterior surface” as being the surface opposite that on which the LEDs are mounted to which heat from the LEDs is transferred. See Ex. 1001, 4:53–55, 4:57–60. They are inconclusive as to whether the “posterior surface” must be distinct from the “rear side.” Further, Mr. Gershowitz’s testimony in support of a “distinct” construction is based on his interpretation of the words “on the” in claim 4’s recited “posterior surface on the rear side of the PCB.” Ex. 2006 ¶ 128. Specifically, he testifies that “[i]f the posterior surface was the rear side of the PCB, the claim would have said so.” Id. He does not cite any support in the Specification of the ’595 patent for his interpretation. See id. Given that his testimony amounts to speculation divorced from the context of the Specification, Mr. Gershowitz’s testimony is entitled to little weight. We also have considered Mr. Smith-Gillespie’s testimony in support of Petitioner’s contention that an ordinarily skilled artisan “would have understood that the rear outermost surface of the PCB is the recited ‘posterior surface.’” Pet. Reply 20 (citing Pet. 83; Ex. 1002 ¶ 243). He cites a passage in the Specification of the ’595 patent that states: “The PCB may comprise a metal core PCB and the posterior surface of the PCB may be metallic so that air within the constricted convection channel may cool the metallic posterior surface (and subsequently the backlight assembly) more easily and efficiently.” Ex. 1002 ¶ 243 (emphasis omitted) (quoting Ex. 1001, 4:60–65). We accord Mr. Smith-Gillespie’s testimony more weight than Mr. Gershowitz’s testimony given that Mr. Smith-Gillespie’s testimony is rooted in disclosures about metal core PCBs in the ’595 patent. It also gives some credence to the notion that the “posterior surface” and the “rear side” could be one and the same. Based on the record before us, we do not agree with Patent Owner that” slip op. at 19

  Patent outcomesUS 8,854,595 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,854,595
• Deltran USA LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • PTAB / AIA Trials › §315(e) estoppelNot reached

    “arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14

  • Strike new argumentNew argument consideredOther

    “Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15

  Patent outcomesUS 11,667,203 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,667,203
• Lenovo (United States), Inc. v. University Of RochesterSome claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01225 · APJ Thu A Dang · IPR · Final written decision

  Claims 1 and 3–7 are unpatentable as obvious; claims 8–12 were not shown unpatentable because the asserted grounds did not establish asynchronous operation between domains.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “specification is the ‘single best guide to the meaning of a disputed term,’ . . . and ‘is, thus, the primary basis for construing the claims.’” Trs. of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016) (citations omitted). Although Patent Owner contends that the Specification disparages systems that impose significant restrictions on the possible choices of frequencies (PO Resp. 21), we find availing Petitioner’s contention that “[s]upport for Patent Owner’s construction is absent from the specification.” Pet. Reply 10. As Petitioner points out, Patent Owner’s claim construction “appears to be based on a single paragraph of the ’443 patent referring to preexisting ‘synchronization schemes [that] restrict the phase relationship and relative frequencies of the clocks.” Id. That is, the only reference by Patent Owner to the Specification is that the Specification states that “Some synchronization schemes restrict the . . . relative frequencies of the clocks, thereby eliminating the need for hardware arbitration [27]. Unfortunately, these schemes impose significant restrictions on the possible choices of frequences.” PO Resp. 26 (citing Ex. 1001, 6:32–36). We agree with Petitioner that such disclosure in the Specification “does not describe how these synchronization schemes ‘restrict the phase relationship and relative frequencies’ with any specificity.’” Pet. the Specification that some schemes impose restrictions on the possible choices of frequency is not a disparagement of any system that has limited choices of frequency or would preclude the claims from covering such prior art techniques. Instead, as Petitioner points out, the Specification of the ’443 patent states “[t]he preferred embodiment uses four domains […] so that domains may vary somewhat in size and still be covered by a single clock.” Id. (citing Ex. 1001, 5:57–59). As Dr. Baker testified in support of Petitioner’s contention, “the preferred embodiment of the ’443 patent relies on a single external master clock that distributes a signal to the local PLL of each domain.” See Ex. 1032 ¶ 9. Thus, although Patent Owner contends that clock signals generated based on a master clock cannot be interpreted to be generated independently of the clock signals generated for others of the plurality of domains (PO Resp. 49), we agree with Petitioner that such claim construction would “exclude[] the preferred embodiment of the ’443 patent,” which is disfavored. Pet. Reply 11. For the reasons discussed above, we conclude that “changeable independently” of the other domains does not require that the separate clocks in the plurality of domains be globally-asynchronous.” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “As both parties recognize, (PO Resp. 5; Pet. Reply 12), “[actual] [r]eduction to practice in the United States requires that the invention be embodied in tangible form.” Scott v. Koyama, 281 F.3d 1243, 1247 (Fed. Cir. 2002). In particular, actual reduction to practice requires a showing of the invention in a physical or tangible form that shows every element. not sufficient. See Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1445 (Fed. Cir. 1984). Here, Patent Owner does not provide any evidence showing every element of the claims in physical or tangible form, as required, but rather contends that the Specification refers to the Paper, wherein the Paper stated that simulation using a software, SimpleScalar, was performed. PO Resp. 16. We are persuaded by Petitioner’s contention that the SimpleScalar simulation was not an actual reduction to practice of the claimed invention. Pet. Reply 12. As Petitioner points out, claim 1, for example, is directed to a “microprocessor,” wherein “Patent Owner has presented no evidence and has not alleged that any physical microprocessor was ever produced or operated.” Id. at 13; see PO Resp. 15–17. And as Petitioner points out, “Patent Owner has produced no evidence of any physical prototype of the claimed microprocessor that could have validated the simulation.” Pet. Reply 13–14. We agree with Petitioner that, at most, such simulation “demonstrated feasibility for prototyping of a microprocessor,” but not a tangible form of the microprocessor itself as required for an actual reduction to practice. Id. at 14; see also Standard Mfg. Co. v. United States, 25 Cl. Ct. 1, 67 (1991) (“The feasibility of the optical alignment system may have been proven by the optical mock-up, but the optical mock-up was not a reduction to practice of the proposed MHU–145/M trailer.”).” slip op. at 36

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Here, we find that Petitioner has not met its burden to prove that one of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  • BurdenMixed

    “of ordinary skill in the art would have recognized that “the functional units of Georgiou operate asynchronously since they have different clocks.” Pet. 74 (citing Ex. 1002 ¶¶ 53–56, 211–219). Specifically, although Petitioner relies on Georgiou for teaching different clocks, Petitioner’s conclusory statement that such application would operate asynchronously requires gapfilling. Id. As Patent Owner points out, Georgiou discloses a clocking architecture in which “all domain clocks are derived from a shared master clock through predetermined rational dividers.” PO Resp. 49. Petitioner concedes during the oral hearing that, in systems such as Georgiou, each domain clock is set a fraction of a master clock, and thus, the various domain clocks are “possibly” synchronous with each other. Tr. 59:4–14 (JUDGE DANG: . . . would being fractions of the master, wouldn’t they be synchronized with each other? MR UHR: They may be, . . . the answer is possibly.”) Thus, we find Petitioner’s contention that a POSITA would have recognized that the functional units of Georgiou operate “asynchronously” lacks sufficient support in the record. We find the testimony of Dr. Baker insufficient to support Petitioner’s position. Ex. 1002 ¶¶ 53–56, 213, 215–219. In his declaration, Dr. Baker testified that he “provided several references . . . that explain operating domains asynchronous to one another while the domains operate synchronously.” Id. ¶¶ 215–219. However, although such references explain “globally asynchronous, local synchronous (GALS) systems” (id. ¶ 216), Dr. Baker does not explain why a POSITA “would have known that a functional unit of Georgiou also operates asynchronous with respect to at different frequencies.” Id. ¶ 217. Without evidentiary support, we are left with speculation and impermissible hindsight. See in Re Wagner, 379 F.2d 1011, 1017 (CCPA 1967). We decline to engage in speculation. See, e.g., In re Vaidyanathan, 381 F. App’x 985, 993 (Fed. Cir. 2010); In re Wallen, 565 F. App’x 867, 869 (Fed. Cir. 2014), both citing In re Zurko, 258 F.3d 1379, 1386 (Fed. Circ. 2001) ([T]he Board must point to some concrete evidence in the record in support of these findings.”). In sum, based on our review of the record, we find Petitioner’s showing is insufficient. Thus, based on the complete record presented, we determine that Petitioner has not persuasively shown that Georgiou teaches “operating the microprocessor such that each domain operates synchronously, while the domains operate asynchronously relative to one another,” as recited in claim 8.” slip op. at 28

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Apple Inc. v. Smith Interface Technologies, LLCSome claims unpatentable
  PTAB · Jan 2, 2026 · IPR2024-01087 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–4, 6, 7, 10–13, 15–17, 19, 20, 23–26, 29, 32–35, 37, 38, and 40–42 are unpatentable under §103; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The difference between the parties’ positions is solely that Petitioner includes “human-computer interaction” as a relevant degree and “human computer interfaces” as relevant working experience. We need not resolve that difference, because no matter which stated level of ordinary skill is applied, all of our findings and conclusions would be the same and because neither party asserts the other party’s expert is not qualified as an expert. In the Decision on Institution, we adopted Petitioner’s stated level of ordinary skill in the art. Inst. Dec. 8. We continue to adopt Petitioner’s stated level of ordinary skill in the art.9 C.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner asserts that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 3. Patent Owner agrees that “no formal constructions of any claim terms are necessary.” PO Resp. 7. We agree with the parties that no express construction of any claim term is necessary.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “First, we find that Hackborn clearly discloses an embodiment in which swiping the finger, not just mere contact without motion (i.e., a tap), moves the blades of grass in the background wallpaper. Hackborn explicitly states: “In the example shown in FIG. 1, a user is swiping her finger across a touch-sensitive display screen of the computing device. In response, the blades of grass 105 displayed in the area of the screen swiped by the user are caused to bend or sway as if contacted by the user’s finger during the swipe.” Ex. 1004 ¶ 28. Because this description expressly refers to “swiping” or moving the finger “across” the display screen, it does not encompass a mere tap, or contact by the user that does not move on the display screen. If a single-tap-contact embodiment for moving the blades of grass in the background wallpaper is disclosed, it would be in an embodiment different from the swiping embodiment. Here, Petitioner is relying only on the swiping embodiment for moving the blades of grass in the background wallpaper. Thus, we disagree with Patent Owner that Hackborn discloses no need to distinguish a tap from a swipe. We find that in the swipe embodiment, it is important to distinguish a tap from a swipe, and thus there is reason, as Petitioner contends, for one of ordinary skill in the art to look to Westerman for implementation details on how to make such a distinction. Specifically, for recognizing a swipe from a tap, Westerman describes determining whether the finger path displacement exceeds a predetermined threshold (Ex. 1005 ¶¶ 19, 61), and examining the initial velocity of the contact at contact’s touchdown (Ex. 1005 ¶¶ 19, 62). As for Patent Owner’s noting that in several instances Hackborn generally refers to a user’s finger contacting items on the wallpaper, that does not undermine Petitioner’s positions, because in the “swipe” embodiment, the referenced contact would be a swipe, and not a single tap without any motion of the finger.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Pet. 39. This reasoning is unpersuasive. The reference in claims 17, 37, and 38 to “the at least some of the plurality of images” identifies the at least some of the plurality of images first recited in claim 1 on which claim 17 depends, and the at least some of the plurality of images first recited in claim 23 on which claims 37 and 38 depend. According to independent claims 1 and 23, however, the displaying in sequence of the at least some of the plurality of images must be based in part on the magnitude of the first contact. Pet. vii–vii, xiv. The social networking posts and images contained therein images, identified by Petitioner as being displayed in sequence by automatically moving one-by-one, have not been shown by Petitioner as being displayed based in part of the magnitude of the user contact, as Patent Owner correctly notes. PO Resp. 32–35. In its Reply, Petitioner attempts to change its reasoning for claims 17, 37, and 38 by shifting to rely on the background wallpaper of grass swaying in response to user swiping. Reply 13–14. This shift in reliance is a belated new argument and not entitled to consideration. We decline to consider it. Accordingly, Petitioner has not proved by a preponderance of the evidence that claims 17, 37, and 38 would have been obvious over Hackborn and Westerman. E.” slip op. at 27

  Patent outcomesUS 10,656,755 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,656,755
• Oneplus Technology (Shenzhen) Co., Ltd. v. Pantech CorporationInstituted
  PTAB · Dec 9, 2025 · IPR2025-00756 · APJ Thu A Dang · IPR · Institution

  The Board instituted IPR on claims 1, 2, 5–8, 11, and 12 on three §103 grounds, finding a reasonable likelihood of unpatentability over the asserted combinations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1, 2, 5–8, 11, and 12 of the ’803 patent to determine whether: 1) claims 1, 5–7, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over TS 36.300, TS 36.321, and TS 36.331; 2) claims 1, 2, 5–8, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson and TS 25.331; and 3) claims 5, 6, 11, and 12 are unpatentable under 35 U.S.C. § 103 as obvious over Ericsson, TS 25.331, and Sebire; and” slip op. at 27

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “ordinary meaning, “primary” and “non-primary” cells are all cells that the WTRU is connected to (PO Resp. 16), the plain language in claim 1, and similarly in claim 7, does not require a “primary” node or “non-primary” cell to have a connection to the WTRU. See Ex. 1001, 10:38−56; 11:11–26. We find unavailing Patent Owner’s contention that the claims require that the WTRU “be connected to more than one cell,” wherein cells that are “associated with a wireless network node,” but are not connected to the WTRU “at the same time” cannot be “primary” or “non-primary” cells. PO Resp. 16. In the ’803 patent, nothing in the Specification clearly limits “primary” and “non-primary” cells as Patent Owner proposes. Prelim. Resp. 16. Patent Owner points to the Specification of the ’803 patent to show that, for softer handover, the WTRU is connected “with more than one cell [] which are controlled by the same Node-B,” and “[o]ne of the[se] cells 808 may be designated as a primary cell 808a, while other cells are designated as a non-primary cells 808b.” Id. (alterations in original) (citing Ex. 1001, 8:44–46, 9:4–6, Figs. 8A–B). However, this portion of the Specification (describing a softer handover embodiment in which a cell “may be designated” as a primary while other as non-primary) does not provide a clear definition to warrant interpreting the “primary” and “non-primary” cells as requiring “connection” to the WTRU “at the same time.” Id. That is, nothing in the Specification clearly precludes “primary” and “non-primary” cells from being “source” and “target” cell, as Patent Owner contends. PO Resp. 16. and the Specification, we determine that the terms “primary” and “non-primary” recited in claims 1 and 7 are not limited to cells connected to a WRTU at the same time. We determine no further explicit construction of this term is necessary to resolve the controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “f) Motivation to combine Ericsson and TS 25.331 Petitioner contends that a “POSITA would have been motivated to combine Ericsson and TS 25.331 because they are directed to similar technologies and a skilled artisan would have understood the benefits of combining these two references,” and “would have understood that there was a high likelihood of success in making the combination.” Pet. 34 (citing Ex. 1003 ¶¶ 156–157). In particular, the references “are both reasonably pertinent to the problem faced by the inventor, namely protocols for handover in a telecommunications system.” Id. (citing Ex. 1003 ¶ 158). According to Petitioner, the combination “involves the predictable use of interchangeable prior art elements according to their established functions” more than routine engineering.” Id. at 37 (citing Ex. 1003 ¶ 174). At this stage of the proceeding, Patent Owner does not present arguments in the Preliminary Response addressing the specific merits of Petitioner’s contentions with respect to the motivation to combine Ericsson and TS 25.331. See generally Prelim. Resp. 15–18. We find availing Petitioner’s contention that Ericsson and TS25.331 are “directed to similar technologies,” and that a “skilled artisan would have understood the benefits of combining these two references.” Pet. 34. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that a POSITA would have had a reason to combine the teachings of Ericsson and TS 25.331.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Kakaes, contends that a person of ordinary skill in the art (POSITA) “would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems,” and “would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks existing at the relevant time,” wherein “[m]ore education may supplement practical experience or vice versa.” Pet. 12–13. At this stage in the proceeding, Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,764,803
• Apple Inc. v. Ferid AllaniInstituted
  PTAB · Nov 4, 2025 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Institution

  The Board instituted review of claims 1–27 on all asserted grounds, finding a reasonable likelihood of unpatentability for claims 21 and 23–26.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Institution of an inter partes review may not be authorized by statute “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in establishing the unpatentability of at least one of claims 1– 27 of the ’058 patent. Accordingly, we institute the requested inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] at the time of the ’058 Patent would have had bachelor’s degree in computer engineering, electrical engineering, or a related field, with two to three years of experience with web-based information systems. Additional education or experience might substitute for the above requirements. Dec., ¶¶37-39. Pet. 3 (citing Ex. 1003 ¶¶ 37–39). Patent Owner contends that: A [person of ordinary skill in the art] at that time would be a person with a bachelor’s degree in computer science, computer engineering, or a closely related discipline and two years of relevant professional experience in software engineering or a 2 US Patent No. 6,119,155 issued Sept. 12, 2000 (Ex. 1004). 3 US Patent No. 6,037,934 issued Mar. 14, 2000 (Ex. 1005). 4 US Patent No. 6,353,839 B1 filed Apr. 30, 1998, issued Mar. 5, 2002 (Ex. 1006). 5 US Patent No. 6,493,702 B1 filed May 5, 1999, issued Dec. 10, 2002 (Ex. 1008). 6 US Patent No. 6,138,158 issued Oct. 24, 2000 (Ex. 1007). similar field. Alternatively, someone with an advanced degree and less professional experience or less education and more professional experience would also qualify as a [person of ordinary skill in the art]. Prelim. Resp. 11. Given that Patent Owner’s definition of a person of ordinary skill substantially overlaps with Petitioner’s definition, and given that Patent Owner does not challenge Petitioner’s definition, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that the plain meaning of “beforehand locally stored” requires the claimed selection pages to be present on the local device before a user conducts a preliminary search. Even if we were to agree with Petitioner that a user could download and store selection pages to the local device, such downloading and storing must occur before the user locally performs a preliminary search in order for the selection pages to be “beforehand locally stored” within the scope of claims 1 and 27. We construe the terms “said selection pages being beforehand locally stored” recited in claim 1 and “said selection pages being . . . beforehand locally stored” recited in claim 27 as requiring the selection pages to be locally stored before a user locally performs a preliminary search.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We agree with Petitioner. Rossman discloses times when accessing a web page over the network is unavoidable. Col. 8; see Pet. 21. Himmel teaches that using a bookmark to directly access a desired page is quicker than navigating through intermediate pages to get to the desired page. See Pet. 22–23, 25. Patent Owner does not address Rossman’s disclosure that a request to a network web page may be unavoidable, and does not address Himmel’s disclosure of making a direct request to the desired web page to save time and conserve network resources when accessing the desired web page. On this record, we agree with Petitioner that adding Himmel’s bookmarks to Rossmann’s cards provides the benefit of directly accessing a particular web function, thus reducing network traffic and data usage as compared to navigating multiple web pages to arrive at the particular web function.” slip op. at 9

  Claim construction§ 103 obviousness
  Patents in suitUS 10,943,058
• Oneplus Technology (Shenzen) Co., Ltd. v. Pantech CorporationInstituted
  PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution

  The Board instituted IPR on claims 1–5 and 8–12 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Koskinen.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and at least two years of practical experience with design or development of telecommunication and/or wireless communications systems, or the equivalent.” Pet. 7 (citing Ex. 1003 ¶¶ 19–21). Petitioner further argues that “[a]dditional education” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “For the purposes of this Decision, we need not expressly construe any claim terms.6 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Additionally, a person having ordinary skill in the art would have known and been familiar with information elements (IEs) that specified an RLC reordering timer value based on (1) general knowledge that IEs carried information in RRC messages and (2) that 3GPP TSs describe an IE carrying recording timer duration information for the RLC layer. See Ex. 1003 ¶ 151; Ex. 1014, 219–20. Accordingly, it would have been obvious to a person having ordinary skill in the art “that the PDCP timer information, which used similar variables as its RLC counterpart (Koskinen, ¶¶37-38), would also be carried in a PDCP configuration IE.” Ex. 1003 ¶ 151.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,863,573
• Disney Media & Entertainment Distribution LLC v. Digital Media Technology Holdings, LLCAll claims unpatentable
  PTAB · Aug 25, 2025 · IPR2024-00736 · APJ Lisa A Murray · IPR · Final written decision

  Claims 1, 4–7, and 9 are unpatentable as obvious over Garfinkle and Kosten; claim 11 is unpatentable as obvious over Garfinkle, Kosten, and Allen.

  RulingsFinal written decision

  • ExcludeMotion to exclude, grantedPetitioner expert discountedGranted

    “Our reviewing court has held that if a declarant fails to qualify as a person of ordinary skill in the art, then that person’s testimony regarding the knowledge or motivations of one of ordinary skill in the art is irrelevant as a matter of law. Kyocera Senco Indus. Tools Inc. v. International Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022) (“To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.”). Mr. Daniels’ declaration consists of an analysis of the cited prior art in comparison to the challenged claims and a discussion of whether there would have been a 2 The motion does not seek to exclude the declaration of the named inventor of the ’725 patent, Nick Stiliadis. See Ex. 2109 (Stiliadis Declaration). motivation to combine the prior art. Ex. 2121 ¶¶ 4–20. Mr. Tulchin’s declaration addresses claim construction issues. Ex. 2131 ¶¶ 5–35. Each declarant, therefore, addresses issues that must be considered from the vantage point of a POSITA at the time of the invention, meaning a person with the level of ordinary skill defined in Section II.E.1 above. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (claim construction); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (obviousness). If Mr. Daniels and Mr. Tulchin do not qualify as POSITAs, as Petitioner alleges, then their opinion testimony is inadmissible under Federal Rules of Evidence 702 (Testimony by Expert Witnesses). We find that there is insufficient evidence in the record to establish that Mr. Daniels qualifies as a POSITA in relation to the ’725 patent. Mr. Daniels has an undergraduate degree in engineering physics in addition to a law degree. Ex. 2121 ¶ 2. His declaration, however, does not establish that he also has “one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” See Section II.E.1 above. Mr. Daniels characterizes his non-legal work experience as follows: The rest of my professional career has been spent working in my own companies in the research, development and prototyping/commercialization of a number of different technologies, principally including fishing rod technology, digital video file transport, storage and processing, LED-based light-emitting tapes, drone control systems, wearable medical related electronic devices and breath-based diagnostic devices. Ex. 2121 ¶ 3; see also Ex. 1023, 99 (Daniels Deposition) (describing work on “a suite of interactive television innovations,” including “the first working pause button”). None of the projects identified appears to relate to “marketing and distribution of multimedia material over a computer network.” Patent Owner argues that Mr. Daniels “was involved (at the time of the filing of the application which matured into the ’725 patent) in making inventions, that dealt with interactive television, video pause buttons and video file provision over the Internet.” Sur-Reply Br. 6. However, neither Mr. Daniels’ declaration nor his deposition testimony assert that he ever worked on “video file provision over the Internet,” let alone that he did so for one year or more. See Ex. 2121 ¶ 3; Ex. 1023, 98–100. We find that the evidence in the record is not sufficient for us to conclude that Mr. Daniels qualifies as one of ordinary skill in the art. We further find a lack of evidence establishing that Mr. Tulchin qualifies” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “In our Decision on Institution, we adopted the following definition of the level of skill for one of ordinary skill in the art: “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field plus one year of experience related to marketing and distribution of multimedia material over a computer network, or the equivalent.” Dec. 9. Patent Owner’s proposed definition differs from the Board’s only in that it adds a Bachelor of Science in engineering physics to the list of degrees that one of ordinary skill in the art might possess. See id. We view engineering physics as being related to the fields of electrical engineering, computer engineering, and computer science. Accordingly, following a review of the full record, we view Patent Owner’s proposed definition in its Response as consistent with the ’725 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaning

    “When interpreting the meaning of a claim, “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner has, briefly, proposed six claim terms for construction: exhibition; exhibitor; broadcast exhibitor; distribution; marketing; and storing. PO Resp. 10. The Petition states that “[t]o resolve the grounds presented herein, Petitioner does not believe that any term requires explicit construction.” Pet. 12. We see no reason why “exhibition” and “exhibitor” should be understood as having a meaning as narrow as Patent Owner proposes. “Exhibition” and “exhibitor” encompass more than just a showing by “one in the exhibition business” because the specification of the ’725 patent identifies certain “exhibitors” that are not “in the exhibition business”: e.g., a high school, libraries, and other non-profit organizations. Ex. 1001, 12:38–41 (“schools, libraries, and other non-profit organizations”), Fig. 1 (“high school”). The plain and ordinary meaning of “exhibitors” is at least broad enough to encompass the types of exhibitors identified in the specification: movie theaters, television stations, satellite television operators, cable television operators, and non-profit organizations such as high schools. Ex. 1001, 4:20–22, Fig. 1. We further determine that some of these exhibitor types, including at least satellite and cable television operators, are “broadcast exhibitors.” Moreover, we find that the plain and ordinary meaning of the term “distribution” is not so narrow as to be limited to “the business of marketing films and providing copies to venues,” as Patent Owner proposes. See PO Resp. 10 (emphasis added). The claimed invention is a “method of marketing and distributing multimedia,” which is not limited to films. We agree with Petitioner that the term is at least broad enough to encompass distribution of any type of multimedia to any type of exhibitor contemplated in the specification. See Ex. 1001, 1:20–25 (multimedia types); Reply Br. 6. Similarly, the plain and ordinary meanings of “marketing” and “storing” are not limited to Patent Owner’s specific examples: interesting individuals in seeing a film and saving to non-volatile storage, respectively. See PO Resp. 10; Tr. at 57:3–7. The invention is directed to marketing and distributing multimedia, not just films, Ex. 1001, 16:21, and while the Specification refers to storing multimedia on “hard drives,” id. at 4:35–37, 4:44–52, there is nothing in the Specification, claims, or prosecution history that would limit storage only to hard drives or other non-volatile storage. The intrinsic evidence suggests that the proper construction of each” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art would have been motivated to use Garfinkle’s video distribution system to implement Kosten’s distribution method to achieve the improvements described therein, such as: access to a large number of video products and advertising materials available at a centralized location (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), improved advertising capabilities (Ex-1007, 54; Ex-1005, 1:42–49, 1:54–2:12), and improved distribution processes resulting in lower shipping and handling costs and labor intensity, improved security against piracy, wider and more flexible distribution capabilities, cost reductions for movie theaters, increased control over time and locations of exhibitions by studios and distributors, an ability to scale up or down distribution based on success in theaters, and an ability to track and monitor sales and marketing data (Ex-1007, 52, 54). Pet. 14 (citing Dystar Textilfarben v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006) (A motivation to combine exists when the “improvement” results in a product or process that is “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.”)). Petitioner further asserts that such a person would have had a reasonable expectation of success in achieving the objective of efficient content distribution through the proposed combination of Garfinkle and Kosten with no change in their respective functions because: (1) both are “from the same field and address the same well-known issues”; and (2) both references purport to achieve this objective in similar and predictable ways, “such as using the well-known teachings of digitizing content, correlating multimedia and associated advertising materials, and connecting multiple user sites to the central station through a public communications system.” Id. at 13, 16–17 (internal citations omitted) (citing Ex. 1005, 2:58–3:5, 3:32–49, 4:37–39; Ex. 1007, 54); Ex. 1002 ¶ 68. Patent Owner contends that there would have been no motivation to combine Kosten and Garfinkle because each represents a “complete solution[] to different file transport modes, Kosten involving simple file transmission to a theater and billboards, and Garfinkle involving file transmission to a [video-on-demand] user. Neither has a problem which is addressed by the other.” PO Resp. 33. Petitioner argues, however, and we agree, that “(1) a known technique can provide motivation to combine and (2) a known technique does not need to improve upon the primary reference—it just must be a ‘suitable option.’” Reply Br. 21 (citing Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023)). Thus, it does not matter that Kosten and Garfinkle each represent a complete and functional solution to digitally transporting media files. If the references in the combination address a known problem, such as issues with multimedia distribution, see Pet. 13–14, and the proposed combination is a suitable solution, then there would have been a motivation to combine the two references. Moreover, Petitioner persuasively argues that by combining Kosten and Garfinkle, one of ordinary skill in the art would have been able to achieve benefits such as lower shipping and handling costs, improved security against piracy, wider and more flexible distribution capabilities, an ability to more easily scale distribution up or down as needed, among other benefits. Pet. 14. We find that these benefits would have provided a sufficient motivation to combine Garfinkle’s technical implementation of a distribution process for large multimedia files with Kosten’s proposed business application, “beaming” films directly to theaters via satellite. Patent Owner’s arguments to the contrary are without merit.” slip op. at 21

  Patent outcomesUS 7,574,725 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,574,725
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00538 · APJ Miriam L Quinn · IPR · Final written decision

  The Board held all challenged claims of the ’933 and ’054 patents not unpatentable because the claims were entitled to the December 22, 2009 priority date, making the asserted prior art unavailable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the time of the invention as someone that would have had “a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one to three years of experience working with wirelessly connected mobile devices that used common wireless communications protocols such as Bluetooth and 802.11.” 537 Pet. 17 (citing Ex. 1203 ¶¶ 29–32). Petitioner also contends that this description “would not differ materially between December 2008 and June 2013,” the earliest possible priority date for the patents-at-issue and the priority date alleged by Petitioner, respectively. Petitioner further contends that more education “would compensate for less work experience and vice versa.” Id. Petitioner. 537 PO Resp. 6−7; 538 PO Resp. 6−7. Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. We adopt Petitioner’s level of ordinary skill in the art particularly because it specifies having one to three years of experience working with wireless devices that use Bluetooth and 802.11.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner

    “Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” 537 Pet. 17–18; 538 Pet. 18−19. Patent Owner does not contend that any terms require construction. 537 PO Resp. 6; 538 PO Resp. 6. We have not identified any terms that require construction for us to decide the threshold issue of priority. And given that the parties have no disputed terms, no claim terms are hereby construed.” slip op. at 17

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “The written description requirement is satisfied when “the missing descriptive matter” is necessarily present in the original “application’s specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998). Thus, it is sufficient to show that the written description actually or inherently discloses the claim element. TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1118−20 (Fed. Cir. 2001). We also note that Patent Owner argues that the field of the 948 application is a predictable application of wireless communications, which, compared to other complex and unpredictable technologies, would require a lower level of detail to satisfy the requirement. See Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 (Fed. Cir. 2018); see also Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“the level of detail required . . . varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.”); 537 PO Resp. 26−27; 537 Edwards Decl. ¶¶ 82, 87; 537 Surreply 8.” slip op. at 20

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “1277 (Fed. Cir. 2011); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). At issue in the instant proceedings is the first requirement, whether the written description of the 948 application is sufficient, because Petitioner contends that the claims of the ’933 and ’054 patent are not entitled to claim priority to ancestry applications under 35 U.S.C. § 120. 537 Pet. 18.43 We disagree with Petitioner because we find that the claims are supported by the written description of the 948 application disclosure.” slip op. at 18

  Patent outcomesUS 9,173,054 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,173,054
• Tessell, Inc. v. Nutanix, Inc.Instituted
  PTAB · Jun 2, 2025 · IPR2025-00298 · APJ Jameson Lee · IPR · Institution

  The Board instituted IPR on claims 1–36 under both § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in computer science, computer engineering, or a related field, with two years of academic and/or industry experience with database technologies.” Pet. 13 (citing Ex. 1003 ¶¶ 57–70). Patent Owner has not proposed a level of ordinary skill in the art and does not dispute Petitioner’s stated level of ordinary skill in the art. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Bhattacharjee and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “be set forth in the specification with reasonable clarity, deliberateness, and precision. Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner has not proposed an express construction for any claim term. Neither has Patent Owner. For purposes of this Decision, we need not expressly construe any claim term. C.” slip op. at 9

  • BurdenInstitutedInstituted

    “Because the inputs are used by the processor to create the database, the inputs must be received by the processor prior to creation of the database. Creation of a database is a way of provisioning a database, as explained in the specification of the ‘818 patent. Ex. 1001, 3:41–43 (“Database provisioning services involve creating and/or associating databases with the database system for management and use.”). The SLA then protects the database “after” it is provisioned (per limitation [1D]) and a snapshot may be captured “after” the database is provisioned (per limitation [1E]). For the foregoing reasons, Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 would have been obvious over Sivasubramanian and Zha. 4. Dependent Claims 2–7, 22, 23, 28–30 Claims 2–7, 22, 23, and 28–30 each depend, directly or indirectly, from claim 1. Ex. 1001, 40:31–57, 42:17–22, 42:35–53. Patent Owner does not present arguments for these claims separate from those it submits for claim 1, which we have rejected above in the context of claim 1. We have reviewed Petitioner’s submissions and determine that Petitioner has shown a reasonable likelihood that it would prevail in showing obviousness of claims 2–7, 22, 23, and 28–30 over Sivasubramanian and Zha.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “With respect to limitation [1E], Petitioner asserts that it would have been obvious for one of ordinary skill in the art to incorporate into Sivasubramanian Zha’s feature of user input of the frequency for retrieving snapshots and user input of the “times during the day” for retrieving snapshots. Pet. 52–54. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1E]. With respect to limitation [1F], Petitioner notes that Sivasubramanian already discloses a user interface to receive the first, second, and third inputs, and asserts that if there are fourth and fifth inputs based on an analysis of limitation [1D], then one of ordinary skill would have used the same interface to receive the fourth and fifth inputs. Pet. 54–55. Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1F]. With respect to limitation [1H], Petitioner asserts that a person of ordinary skill in the art (POSA) “would have understood that the purpose of accepting these inputs [first through fifth] is to use them to ‘create’ a database based on these inputs and based on the amount of storage determined from the user input.” Pet. 57 (emphasis omitted). Patent Owner does not dispute the assertion. We have reviewed the evidence cited by Petitioner, and agree on this record that Sivasubramanian and Zha reasonably would have suggested limitation [1H], provided that limitation [1D] regarding fourth and fifth inputs is met.” slip op. at 11

  Claim construction§ 103 obviousnessDiscretionary denial
  Patents in suitUS 11,860,818

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.