- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Apr 27, 2026 · IPR2024-00906 · APJ Frederick C Laney · IPR · Final written decision
Claims 1, 4–6, and 8–27 are unpatentable as obvious; Judge Hudalla dissented as to claim 15.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“reachable through intuitive navigation from the homepage using the descriptive titles to the reference, is sufficient to demonstrate the BT-Spec was publicly accessible. See M&K Holdings, Inc. v. Samsung Electronics Co., 985 F.3d 1376, 1381 (Fed. Cir. 2021) (“The law regarding public accessibility is not as restrictive as M&K suggests—a website’s landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence.”). The Bluetooth SIG website itself functioned as a well-known, organized repository that a skilled artisan would naturally consult when researching Bluetooth technology. See id. at 1382 (“The Board found that the documents in question on the meeting pages of the JCT-VC website were effectively indexed by subject matter in light of the title-search functionality and the fact that Park and Zhou featured descriptive titles. That finding supports the Board’s conclusion that Park and Zhou were publicly accessible.”).” slip op. at 39
- ExcludeMotion to exclude, deniedDenied
“IV. PATENT OWNER’S MOTION TO EXCLUDE The party moving to exclude evidence bears the burden of proof to” slip op. at 139
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“12. Conclusion Based on the complete record, we find a preponderance of the” slip op. at 115
Patent outcomesUS 11,445,241 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,445,241 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell, Ltd.All claims unpatentablePTAB · Apr 27, 2026 · IPR2024-00907 · APJ Frederick C Laney · IPR · Final written decision
Claims 1, 4, 5, 8–12, and 14–25 are unpatentable as obvious; the majority finds the asserted combinations persuasive despite 3GPP-Spec not qualifying as prior art.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility. A document hosted on the official standards body website, reachable through intuitive navigation from the homepage using the descriptive titles to the reference, is sufficient to demonstrate the BT-Spec was publicly accessible. See M&K Holdings, Inc. v. Samsung Electronics Co., 985 F.3d 1376, 1381 (Fed. Cir. 2021) (“The law regarding public accessibility is not as restrictive as M&K suggests—a website’s landing page is not required to have search functionality. Instead, given the prominence of JCT-VC, the dispositive question is whether interested users of the JCT-VC website could have located Park and Zhou through reasonable diligence.”). The Bluetooth SIG website itself functioned as a well-known, organized repository that a skilled artisan would naturally consult when researching Bluetooth technology. See id. at 1382 (“The Board found that the documents in question on the meeting pages of the JCT-VC website were effectively indexed by subject matter in light of the title-search functionality and the fact that Park and Zhou featured descriptive titles. That finding supports the Board’s conclusion that Park and Zhou were publicly accessible.”).” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (alteration in original)). This search for answers about whether the claimed subject matter would have been obvious to a skilled artisan at the time of the invention applies “an expansive and flexible approach.” Id. at 415. Whether a patent claiming the combination of prior art elements would have been obvious is determined by whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Reaching this conclusion, however, requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id.” slip op. at 14
- ExcludeMotion to exclude, deniedDenied
“IV. PATENT OWNER’S MOTION TO EXCLUDE The party moving to exclude evidence bears the burden of proof to” slip op. at 158
Patent outcomesUS 10,129,590 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,129,590 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,680 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - The Boeing Company v. The Regents Of The University Of CaliforniaNo claims unpatentablePTAB · Oct 2, 2025 · IPR2024-00761 · APJ Alyssa A Finamore · IPR · Final written decision
The Board held claims 1–24 not unpatentable because the asserted references did not show the glass element propagating a modified stress wave to generate tensile stress at the interface.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’684 patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 5 (citing Ex. 1003 ¶ 38). Patent Owner” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“Both parties maintain that no claim term needs to be construed. Pet. 4 (citing Ex. 1003 ¶ 40); PO Resp. 20. Patent Owner, however, provides an express construction for limitation [1.d] of independent claim 1 and the similar limitation of independent claim 13, namely limitation [13.c]. PO Resp. 20 (citing Ex. 2011 ¶ 25). To resolve the controversy before us, we determine that these limitations require express construction. 1. “the glass element is configured to propagate and modify a stress wave to the coating/substrate interface to generate a tensile stress between the substrate and the coating” (limitation [1.d]) and “propagating and modifying a stress wave through the glass element to the coating/substrate interface to generate a tensile force between the substrate and the coating” (limitation [13.c]) Patent Owner argues these limitations mean “changing the profile of the laser generated compressive wave and propagating the wave profile as modified to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface.” PO Resp. 20 (citing Ex. 2011 ¶ 25). Petitioner does not refute this proposed construction and, during the oral argument, Petitioner confirmed it agrees with the proposed construction. Tr. 8:16–9:12. We so no reason to depart from the parties agreed-upon construction of limitations [1.d] and [13.c]. Accordingly, for purposes of this Final Written Decision, we adopt the parties’ construction of limitations [1.d] and [13.c].” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“a shock in the compression wave in the fused silica substrate. Even if we were to agree with Petitioner that Wang-Dissertation’s fused silica substrate modifies the compression waveform, we would not be persuaded that the fused silica substrate propagates the modified wave to the free surface of the coating, which upon reflection from the free surface as a tension wave generates a tensile stress at the coating/substrate interface, as limitation [1.d] requires. In view of the presence of tension-wave-1 in Wang-Dissertation’s experiments, we find Petitioner has not demonstrated persuasively that the fused silica substrate propagates a modified stress wave to the free surface of the coating to generate a tensile stress at the coating/substrate interface. Also, we find credible Dr. Gupta’s unrebutted testimony that any modified compression wave would attenuate in the substrate and not propagate to the free surface coating or generate a tensile stress at the coating/substrate interface. Ex. 2011 ¶¶ 93–98. Petitioner does not dispute that the experiments in Wang-Dissertation include tension-wave-1. See Ex. 1005, 65 (“The experimental picture is complicated somewhat by the presence of a tensile wave, reflected from the back of the confining layer.”). Nor does Petitioner dispute that Wang-Dissertation discloses that the tension-wave-1 propagates faster than the compression-wave-1 and eventually overtakes compression-wave-1. See id. at 65–66 (“Being tensile, it propagates faster that the peak compressive stress, and faster than the low stress tail of the main pulse. It eventually overtakes the compressive pulse and linear dissipative mechanisms govern the final thickness of the shock.”). Rather, Petitioner relies on Dr. Wang’s testimony regarding the timing of the waves through the sample and argues that tension-wave-1 does not overtake compression-wave-1 in the fused silica substrate. Pet. Reply 17 (citing Ex. 1038 ¶ 5). Dr. Wang testifies that the peak stress from tension-wave-1 is about 2 ns behind the peak of compression-wave-1 and will not reach the interface before the reflected tensile peak of compression-wave-1 reaches the interface in 0.3 ns. Ex. 1038 ¶ 5. However, as Dr. Gupta persuasively explains, the delay between tension-wave-1 and compression-wave-1 depends on the properties of the confining layer, and Wang-Dissertation acknowledges that these properties are not well controlled. Ex. 2011 ¶ 54; see also Ex. 1005, 65 (“The surface properties of that confining layer are not well controlled.”).” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“claimed subject matter. Pet. 35–38; Pet. Reply 23–24. In doing so, Petitioner continues to rely on Wang-Dissertation to disclose limitation [1.d] of independent claim 1 and limitation [13.c] of independent claim 13. Pet. 35–38; Pet. Reply 23–24. Petitioner does not put forth any further obviousness rationale in this ground based on Wang-Dissertation for teaching these limitations. For the same reasons discussed in sections II.C.2–3, Petitioner has not persuaded us that Wang-Dissertation teaches or suggests limitations [1.d] and [13.c]. Thus, Petitioner has not shown, by a preponderance of the evidence, that Wang-Dissertation renders obvious the subject matter set forth in claims 4, 6, 9, 15, 17, 20, 23, and 24, which depend from independent claims 1 and 13.” slip op. at 24
Patent outcomesUS 7,487,684 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 7,487,684 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Oct 23, 2024 · IPR2024-00676 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–10, 14, 16, 22–23, 25, and 27 on the asserted obviousness ground based on Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Krantz and Herrmann (see Pet 19–99) and find that, on the record as it now stands, Petitioner has established a reasonable likelihood that it will prevail with respect to at least one claim. As described above,” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“qualifies as prior art to the ’450 patent “because the InfoExpress inventors conceived of the invention [of the ’450 patent] before the effective dates [of Krantz and Herrmann] and exercised reasonably continuous diligence in reducing the claimed inventions to practice.” Prelim. Resp. 33–45. Petitioner disagrees that the present record sufficiently shows that the inventors of the ’450 patent conceived of the invention before the effective date of Krantz or Herrmann and that the inventors exercised reasonably continuous diligence in reducing that invention to practice. See Prelim. Reply 1–7. In particular, Petitioner raises questions with respect to the independence of Patent Owner’s evidence from the inventor testimony that evidence is intended to corroborate, as well as with respect to whether the evidence offered by Patent Owner sufficiently shows conception, reduction to practice, and reasonably continuous diligence. Id. We do not think the information of record is sufficient to antedate Krantz and Herrmann such that we should deny institution of inter partes review on that basis. First, Patent Owner’s arguments rely on the testimony of inventor Stacey C. Lum, who has not yet been subject to cross-examination. See Prelim. Resp. 35–45 (citing Ex. 2003). Second, Petitioner identifies several issues where further development of the record may be helpful. For example, Patent Owner’s asserted date of conception is associated with the date of an engineering specification included in the record as Exhibit 2011. See Prelim. Resp. 35–36 (citing Ex. 2003 ¶ 12; Ex. 2011; Ex. 2012). We agree with Petitioner (see Prelim. Reply 4–5) that it is unclear, based on the present record, whether Exhibit 2011 corroborates the testimony supporting Patent Owner’s conception date given that the present record does not establish the author of Exhibit 2011. See Ex. 2003 ¶ 22 (inventor Stacey C. Lum testifying only that “InfoExpress personnel drafted EX2011”). These and other issues relating to the prior-art status of Krantz and Herrmann are, in our view, best left for trial after full development of the record.3” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,677,450 - PTAB · Oct 4, 2024 · IPR2024-00761 · APJ Donald E Daybell · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute review. Upon consideration of the arguments and evidence before us, we conclude that Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’684 Patent. The Petition is granted, and inter partes review is instituted. A scheduling order will follow this decision.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the time of the invention of the ’684 Patent “would have had an M.S. in Mechanical Engineering or a related field, and at least five years of experience using laser systems to characterize and test mechanical behavior in materials.” Pet. 5. Patent Owner “generally agrees” with this definition. Prelim. Resp. 26. At this juncture, we adopt Petitioner’s definition. This definition appears to be consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’684 Patent was filed before March 16, 2013 (the effective date of the relevant amendments), the pre-AIA versions of §§ 102 and 103 apply. 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 7
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“On this record, we find that the above noted evidence comprises “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that [Wang] qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13. Patent Owner raises a number of questions about Petitioner’s showing. First, Patent Owner contends that the Morris Declaration “is not credible or legally sufficient for various reasons,” including a lack of corroborating evidence. Prelim. Resp. 28–30 (citing, inter alia, Finnigan Corp. v. Int’l Trade Comm’n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)). Nonetheless, Ms. Morris’s testimony at least is consistent with the indicators of publication appearing in the front matter of Wang. See Ex. 1005, 1, 3–6 (added page numbers). As such, we find Ms. Morris’s testimony sufficiently reliable to support a reasonable likelihood that Wang would qualify as a prior art printed publication. At trial, the parties can develop the record about whether, and, if so, the extent to which, testimony regarding publication by a non-inventor witness must be corroborated with other evidence.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“f) Enablement of Wang In order for a prior art reference to anticipate a claim, that reference must enable a person of ordinary skill in the art to make the claimed subject matter. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1566 (Fed. Cir. 1996) (“To anticipate a claim, a reference must disclose every element of the challenged claim and enable one skilled in the art to make the anticipating subject matter.”) Enablement of a prior art reference does not require that the prior art reference show that the disclosed subject matter would have utility; that is, that it would work for any particular purpose. Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005). (“[T]his court has continued to recognize that a prior art reference need not demonstrate utility in order to serve as an anticipating reference under section 102.”), In re Schoenwald, 964 F.2d 1122, 1124 (Fed. Cir. 1992) (“[I]t is beyond argument that no utility need be disclosed for a reference to be anticipatory.”) All that matters is whether the skilled person could have made the claimed subject matter, without undue experimentation. In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012) (“Enablement of prior art requires that the reference teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention.”) (emphasis added). Even references that disclose inoperative devices are still prior art for all that they teach. Id. (citing Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989)). Therefore, questions of whether the prior art may teach away from making the claimed subject matter are not relevant to anticipation. Bristol-Myers Squibb Co. v. Ben Venue Lab’ys, Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001) (“Thus, the question whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation analysis.”)” slip op. at 23
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,487,684
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.