- 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 · GrahamPatents in suitUS 10,863,573 - PTAB · Nov 22, 2024 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–12, finding a reasonable likelihood that claims 1–4 and 9 are anticipated by Winkler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “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); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’017 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in electrical engineering or a similar field and at least two years of experience working with electrical circuits or electrical connectors, including power connectors. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 19 (citing Ex. 1003 ¶¶ 24–26). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 7. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’017 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this juncture, we preliminarily agree with Patent Owner’s proffered claim construction. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)). Although “a patent’s written description can set forth more than one definition of a claim term,” we do not discern that to be the case here. See Pitney Bowes, 182 F.3d at 1310. The portions of the Specification of the ’017 patent that Patent Owner cites use “insulating” and its associated tenses to mean suppressing electrical arcing and protecting from electrical burns, i.e., electrically insulating. See, e.g., Ex. 1001, code (57), 1:58–2:3, 2:42–44, 3:2–6, 3:30–40, 3:63–4:10, cited in Prelim. Resp. 12–14. Accordingly, for purposes of this Decision, we interpret “insulating” as recited in the claims to mean “electrically insulating.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s reliance on the modified Figure 2 diagram not explicitly shown in Winkler is not per se improper, so long as the skilled artisan would have reasonably understood that that is what Winkler discloses. See Acoustic Tech., Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference. . . . Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” (citations omitted)). Dr. Eldering testifies that the diagram was “created based on FIG. 2 of Winkler and developed by taking the components of each half of the connector and recreating them in a separated state.” Ex. 1003 ¶ 80. On the current record, Patent Owner does not dispute Dr. Eldering’s testimony or that Petitioner’s diagram reflects what the skilled artisan would have reasonably understood by looking at Figure 2 of Winkler. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,808,017 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - PTAB · Jan 8, 2024 · IPR2023-00988 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–10, 13, and 15 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1, 2, 4–10, 13, and 15 of the ’683 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Pattison, Petitioner contends a person of ordinary skill in the art “would have had a degree in electrical engineering, materials science, physics, or a similar discipline, along with 2 years of professional experience working with display design, including OLED displays, or an equivalent level of skill, knowledge, and experience.” Pet. 10 (citing Ex. 1003 ¶¶ 37–39). Petitioner further notes that such a person of ordinary skill in the art “would have been aware of and generally knowledgeable about OLED materials, and display pixel design, layout, and operation.” Id. (citing Ex. 1003 ¶ 39). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time, noting that “[f]or purposes of this Preliminary Response, Patent Owner does not believe it is necessary to define the level of ordinary skill in the art.” Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition is consistent with the ’683 patent and the asserted prior art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedOther
“Petitioner appears to have cited Murai’s “Registration Date” of April 23, 2010, as being the publication date. See Pet. 15; Ex. 1007, code (24). It is unclear based on the present record whether this is the correct date for qualifying Murai as a “printed publication” under pre-AIA § 102(b). The parties should further address this issue at trial.” slip op. at 43
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,854,683 - Apple Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Sep 13, 2022 · IPR2022-00573 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–22 and 28 on all six asserted grounds, finding a reasonable likelihood of prevailing; it dismissed Apple’s joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In considering proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision, we “will consider the speed with which the district court case may come to trial and be resolved,” and we “will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for [our] final written decision.” Interim Procedure 9. Here, our projected statutory deadline for a final written decision is September 16, 2023. Based on a median time-to-trial of 27.2 months in the Western District of Texas, the expected trial date in the parallel litigation is in January 2024, which is about four months after our projected statutory deadline for a final written decision. This factor thus weighs against exercising discretion to deny the Petition. The remaining Fintiv factors do not sufficiently outweigh our consideration of the proximity of the court’s expected trial date to the Board’s projected statutory deadline for a final written decision to lead us to exercise discretion to deny institution. Accordingly, under the circumstances of this case, we decline to exercise our discretion to deny institution under § 314(a) in view of the parallel litigation.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2019). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner asserts that “no formal construction is ‘necessary to resolve’ the anticipation/obviousness issues raised in this Petition.” Pet. 5–6 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner directs us to where Flowerdew states, Two element inductive charging systems typically create a resonance in both the transmitting and the receiving coils for a given frequency. The resonance maximizes the current, and hence the flux density from a given drive voltage, and maximizes the receive voltage for a given intercepted flux. . . . When the number and type of secondary units being charged is variable, the power extracted from the field and the amount of permeable material and its distribution are ill defined and therefore the inductance and loss resistance seen in the resonant system are also ill defined. Changes in the inductance or loss resistance resulting from placement of one or[] more secondary units must be compensated for. Ex. 1007, 12:22–38 (cited by Pet. 54). To compensate for these changes, Flowerdew uses a resonance tuning circuit that varies the frequency of charging coils 312, 314 when secondary unit 304 is placed on the charging surface of primary unit 302, thereby keeping the system resonant. Id. at 12:58–62 (cited by Pet. 54–55). A sense coil near the driven coil provides a feedback signal to a microcontroller that produces the signal to the driver, and software allows for the output frequency to be adjusted to maximize the signal from the sense coil. Id. at 13:24–30 (cited by Pet. 55). Flowerdew explains that “[a]pplication of a variable frequency is predicated on the basis that the high efficiency achieved by driving a resonant system is needed for effective operation.” Id. at 13:30–35 (cited by Pet. 55). Petitioner contends that “Flowerdew thus discloses a microcontroller of the charger 302 (base unit) that monitors a ‘feedback signal’ from the sense coil, and that automatically adjusts an output frequency (at least one characteristic of said time varying electric current) responsive to the ‘feedback signal’ to achieve and maintain operation at the ‘resonant’ frequency of the coupled inductor system,” where “the ‘feedback signal’ from the sense coil constitutes “at least one parameter indicative of an efficiency of power transfer from said base unit to said target unit.’” Pet. 55. According to Petitioner, “the drive frequency is adjusted in response to the ‘feedback signal’ to ‘maximize an efficiency of power transfer’ from the charger 302 (base unit) to the secondary unit 304 (target unit).” Id. at 55–56. Petitioner asserts that “operating at the resonant frequency maximizes power transfer efficiency.” Id. at 56 (citing Ex. 1007, 12:24–26, 13:31–32). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Flowerdew teaches the recited monitoring and adjusting steps of claim 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner contends that “[i]t would have been obvious to implement Flowerdew’s charging circuit according to Jang’s suggested use of electronically-controlled switching elements for switching a DC voltage source to produce a time-varying electric current to apply to a primary inductive element (e.g., primary coils 312 and/or 314).” Pet. 64 (discussing claim 3). As support, Petitioner asserts that “a [person of ordinary skill in the art] would have looked to examples such as Jang for additional details as to how to implement aspects of Flowerdew’s charger 302, including oscillator 310––especially since Flowerdew acknowledges that the description of oscillator 310 in Flowerdew is ‘simplified’ (although Flowerdew expressly teaches that various designs/components can be adopted to implement the charging circuit).” Id. at 65 (discussing claim 3) (citing Ex. 1007, 6:8–13, 15:54–67). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Flowerdew and Jang teaches the recited switch element of claim 12. We also are persuaded that Petitioner’s proffered reasoning for modifying Flowerdew’s charging system to include Jang’s inverter, namely, to provide a way to implement Flowerdew’s digital driver, is sufficient on this record. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,825,537 - PTAB · Jul 13, 2022 · IPR2022-00165 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on every asserted ground after finding a reasonable likelihood of success for at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). The Guidance Memo states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo at 3. Petitioner states: “Petitioner already stipulated that if IPR is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR. This favors institution. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential).” Prelim. Reply 5 (emphasis added). With regard to this representation by Petitioner, Patent Owner asserts: “There is no such stipulation of record in this matter or in the District Court, [See EX2018], nor has Petitioner ever provided any such stipulation by any other means.” Prelim. Sur-reply 4. Petitioner’s averment itself constitutes written representation to the Board that if inter partes review is instituted in this proceeding it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in this proceeding. Because Petitioner has represented to the Board that if inter partes review is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR, we decline to deny the Petition discretionarily. Guidance Memo at 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under 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) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on each ground set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2009 ¶ 23.6 Based on the language “[i]f the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” we read the above-quoted testimony of Dr. Surati as indicating that in rendering his opinions, he has assumed the level of ordinary skill as stated by Mr. Willis, and that he has restated that level of ordinary skill more simply as: “a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Petitioner’s assertion is supported by the testimony of Mr. Willis. Ex. 1004 ¶¶ 32–35. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Given that Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art, we adopt Petitioner’s primary statement of the level of ordinary skill in the art, but exclude Petitioner’s “alternative” statement for reasons discussed above. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, 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); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is necessary. Pet. 5. Further, Petitioner states that it interprets claims according to the standard set forth in Phillips. Id. Patent Owner has proposed an express construction for the term “event.” Also, the parties’ arguments reveal conflicting understanding and interpretation of the term “alternative title.” Patent Owner argues that in the context of the ’179 patent, an event is a “detectable condition of a system that can trigger a notification.” Prelim. Resp. 16. On the current record, however, we are uncertain that Patent Owner’s construction is the correct construction. For example, the ’179 patent explains that the method possesses “an event, such as by way of example but not limitation, a new mail event, a new instant message event, a reminder event, a calendar event, or some other event, and generating a string of characters that includes information associated with the event.” Ex. 1001, 2:3–7 (emphasis added). The quoted text appears broad. The ’179 patent states that the events used in the embodiments are merely examples. Id.; see also id. at 12:30–32 (“As used herein, the term ‘embodiment’ means an embodiment that serves to illustrate by way of example but not limitation.”). We have no need, however, to provide an express construction for “event,” because even under Patent Owner’s proposed construction for event, as explained in the discussions of the alleged grounds of unpatentability below, Petitioner has made a sufficient showing for institution purposes.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,402,179 - PTAB · Jul 13, 2022 · IPR2022-00164 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on all grounds, finding a reasonable likelihood of success on obviousness over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to our precedent, one way to mitigate those concerns is for a petitioner to present a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential); accord Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).3 Such a “stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, Paper 12 at 19 (citing Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative, designated July 13, 2020)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. And we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. “would be someone with a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Prelim. Resp. 15 (citing Ex. 2009 ¶ 23). Patent Owner’s declarant, Dr. Surati, testifies: It is my belief that a POSITA [person with ordinary skill in the art] of the ‘135 patent would have possessed: a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems. If the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis. As noted above and on my CV [Ex. 2017], my qualifications exceed this description. Ex. 2009 ¶ 23 (emphasis added). The italicized sentence in the paragraph above is ungrammatical and unclear. It could be interpreted in multiple contradictory ways: The sentence could mean that, in rendering his opinions, Dr. Surati has assumed the level of ordinary skill as stated by Dean Willis. Or it could mean that, “if the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” Dr. Surati’s qualifications exceed those qualifications. Nevertheless, we see no meaningful difference between Petitioner’s definition and Patent Owner’s. Rather, Patent Owner’s definition appears to be a simplified version of Petitioner’s. To the extent that Patent Owner disagrees, Patent Owner is encouraged to explain how the differences affect the obviousness analysis. Also, we preliminarily determine that Petitioner’s definition is supported by the testimony of Dean Willis (Ex. 1004 ¶¶ 32–35) and is consistent with the level of skill reflected in the asserted references (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We need only construe terms that are in controversy and to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner argues that “[i]t is not necessary for the Board to resolve this claim construction dispute for purposes of this Preliminary Response because both Prelim. Resp. 59 n.5. We agree with Patent Owner on this point. See id. That is, we construe the term “title array” to require a data structure, which is not disputed. But other than that, we need not further construe the term at this stage.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,230,135 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 23, 2022 · IPR2022-00385 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1, 4, 5, 8–13, and 17–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on Hiroki anticipation and Hiroki–Akiho obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the petitioner in IPR2022-00117. Petitioner here also represents that none of its real parties in interest is related in any way to the petitioner in IPR2022- 00117. Prelim. Reply 5. Petitioner further represents that it has not coordinated in any way with the petitioner in IPR2022-00117 with regard to challenging the ’215 patent before the Board. Id. Petitioner additionally notes that it and the petitioner in IPR2022-00117 are not even codefendants in the same district court litigation, were not sued by the Patent Owner at the same time, and were sued on the basis of each’s own separate products. Id. at 6.6 With respect to such lack of relationship, Patent Owner makes no contention to the contrary. For the foregoing reasons, General Plastic Factor 1 weighs very strongly against exercising discretion to deny the Petition. 2. Factors 2–5 Regarding Factor 2, Patent Owner points to no evidence that as of the filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner knew of any of the references applied in the Petition at issue in this proceeding. General Plastic Factor 2 weighs against exercising discretion to deny the Petition. Regarding Factor 3, the Petition here was filed on December 31, 2021, prior to the filing of Patent Owner’s preliminary response and the Board’s institution decision in IPR2022-00117. Patent Owner points to no evidence of Petitioner using any Board decision or Patent Owner submission as a roadmap to prepare the Petition. General Plastic Factor 3 weighs against exercising discretion to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Fintiv Factor 2 It is undisputed by the parties that the district court has now scheduled trial in both the parallel litigation involving Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., and the parallel litigation involving Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date of March 6, 2023 is approximately four months prior to the expected time of a final written decision in this proceeding. Fintiv factor 2 weighs in favor of exercising discretion to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 is anticipated by Hiroki.” slip op. at 37
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“crystalline alloy, as claimed. Ex-1002, ¶¶ 115–116; Ex-1015, 1:13–15; Ex- 1007, [0015]; Ex-1018, 1:38–39.” Pet. 29. However, paragraph 41 of Sakuma, cited by Petitioner, describes Sakuma’s embodiment as shown in Figure 7, not Sakuma’s embodiment as shown in Figure 2A. Ex. 1005 ¶ 41. As discussed above in Section II.C.2, the embodiment disclosed by Sakuma with respect to its Figure 2A is structurally different from the embodiment disclosed by Sakuma in Figure 7. Whereas in the Figure 2A embodiment soft magnetic sheet 11 comprises separate magnetic tile pieces 311 arranged in a single loop and a single layer, in the Figure 7 embodiment soft magnetic sheet 11 comprises not magnetic pieces arranged in one layer but two stacked magnetic sheets. Ex. 1005 ¶¶ 28, 29, 40, 41. Sakuma does not identify “sendust” as usable material for magnetic pieces 311 in the Figure 2A embodiment. Id. ¶ 42. Petitioner does not provide any reason why one with ordinary skill in the art would have read Sakuma’s disclosure of “sendust” as also describing any magnetic piece 311 in the Figure 2A embodiment of Sakuma. We are not sufficiently persuaded, for institution purposes, that Sakuma discloses using “sendust” as the material for any magnetic piece 311 in Figure 2A. d) Conclusion Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 1 and 13 by Sakuma. 4. Dependent Claims 8, 9, 11, 17, 19, and 21 Claims 8, 9, and 11 each depend directly from claim 1. Ex. 1001, 10:46–61. Claims 17, 19, and 21 each depend directly from claim 13. Id. at 12:10–28. Each dependent claim incorporates all the limitations of the claim on which it depends. For the same reasons discussed above in the context of claims 1 and 13 regarding limitation 1[i] and limitation 13[j], Petitioner has not sufficiently shown that Sakuma discloses those limitations. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 8, 9, 11, 17, 19, and 21 by Sakuma. D.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,843,215
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.