• Comcast Cable Communications, LLC v. Entropic Communications, LLCSome claims unpatentable
  PTAB · Sep 4, 2025 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 1–3, 6–10, 14–18, and 22–24 are unpatentable; claims 4–5, 11–13, and 19–21 are not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for petitioner

    “We agree with Petitioner that the ’690 patent does not limit the term “probe” to channel assessment. Pet. Reply 2–4. Reviewing the intrinsic evidence, the “Technical Field” of the ’690 patent states that “some embodiments relate to channel assessment probes,” implying others do not. Ex. 1001, 1:13–14. The ’690 patent further states that “receiver determined probes may be used in a variety of applications” including to “discover hidden nodes” and “off-site network diagnosis.” Id. at 2:20–27. In addition, the ’690 patent states that probes may be used for “network maintenance procedures,” to “replicate a potential problem, reach or discover a distant or previously undetected node on the network, or assist with network admissions procedures.” Id. at 4:25–38. Turning to the claims of the ’690 patent, the evidence of record does not establish that the independent claims recite anything unique or specific to channel assessment (although their scope covers that purpose). Furthermore, dependent claim 7 of the ’690 patent recites that the “probe” is used to diagnose a network problem, and dependent claim 13 recites that the “probe” is used to identify a hidden node. Restricting the independent claims to probes used solely for channel assessment would be contradictory to these dependent claims. Littlefuse, Inc. v. Mersen USA EP Corp., 29 F.4th 1376, 1380 (Fed. Cir. 2022) (construction of term in independent claims should not render dependent claims superfluous or lacking scope).” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “We agree with Petitioner that a “physical layer probe” is “a probe that relates to the physical layer.” The term does not appear per se in the specification of the ’960 patent, nor in the prosecution history, but only in claims 9, 17, and 19. However, the term “physical layer” is well-known and is the first layer in the Open Systems Interconnection (OSI) network model. See, e.g., Ex. 1021, 35–40, 69; Ex. 1002 ¶¶ 49–50. The physical layer is used to transmit digital bits over a network, and defines the timing, mechanical, and physical network characteristics required for transmitting the data bits. Hence, a “physical layer probe” is a probe that relates to the physical layer. We need not, and do not, construe the term further to resolve the parties’ dispute. See Realtime, Vivid Techs., supra. Having decided proper constructions for the disputed terms, we proceed in our analysis to consider the parties’ arguments concerning the challenge grounds. In the following sections, we apply the plain meaning of the claim terms, and as necessary, specify what the plain meanings are.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “C. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA8 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art. We adopt and apply Petitioner’s proposed skill level because it is consistent with the problems and solutions identified in the ’690 patent and the prior art references asserted by Petitioner. In addition, we find the adopted skill level consistent with the education and experience that a POSITA would have had. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)) (citing factors to consider when determining level of ordinary skill in the art).” slip op. at 25

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Hence, we determine that Petitioner has shown by preponderant evidence that the Ranging Request (“probe request”) message includes CID and SS MAC address and other parameters (“first plurality of parameters”) which at least specify the CID (“content payload of the probe”) and the SS MAC address (“second node”) of the Ranging Response.12 We thus proceed to consider Petitioner’s contentions for the remaining limitations of claim 1, which are undisputed, and determine that claim 1 is anticipated by IEEE-802.16.” slip op. at 29

  Patent outcomesUS 8,284,690 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,284,690
• Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentable
  PTAB · Aug 13, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Final written decision

  Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not determined unpatentable under the asserted prior-art grounds.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we disagree with Patent Owner that Menard is a “real party in interest” under § 315(b). See Resp. 77–82; Sur-reply 27–28. First, the circumstances here differ materially from the circumstances in Ventex. There, two agreements defined the relationship between Ventex (the petitioner and manufacturer of Heatwave fabric) and Seirus (the alleged real party in interest and purchaser of Heatwave fabric). Ventex, IPR2017- 00651, Paper 152 at 7 & n.8. First, a 2013 Supplier Agreement “prevented Ventex from selling to Seirus competitors” and included an indemnity provision requiring Ventex to indemnify Seirus for losses arising from Ventex’s failure to perform certain obligations. Id. at 7, 14. Second, a 2016 Exclusive Manufacturing Agreement provided that Ventex would manufacture the Heatwave fabric only for Seirus in exchange for Seirus’s payment of an exclusivity fee. Id. at 7. Columbia (the patent owner) accused Seirus products incorporating the Heatwave fabric of infringing the patent at issue, and Columbia served Seirus with a complaint alleging patent infringement in 2014 more than two years before Ventex filed a petition in 2017. Id. at 5, 7. When determining that Seirus was a “real party in interest” under § 315(b), the Board reasoned that “Ventex and Seirus had a specially structured, preexisting, and well established business relationship with one another, including indemnification and exclusivity arrangements.” Ventex, IPR2017-00651, Paper 152 at 10; see id. at 12. Additionally, the Board noted that certain evidence “suggest[ed] that” slip op. at 32

  • Skill levelOther

    “C. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the ’336 patent’s effective filing date would have had “a bachelor’s degree in mechanical engineering, electrical engineering, optics, or physics with at least three years of experience working in the design of LED lights or lighting fixtures; a master’s degree in one of the above disciplines with at least two years of experience; or equivalent experience.” Pet. 14 (citing Ex. 1004 ¶¶ 26–29). Dr. Eden’s testimony supports Petitioner’s assertion. See Ex. 1004 ¶¶ 27–28. Patent Owner “adopts for purposes of this proceeding only” Petitioner’s description of an ordinarily skilled artisan. Resp. 10 (citing Pet. 14). We adopt Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’336 patent as” slip op. at 40

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “Alleged Objective Indicia of Nonobviousness (i) General Principles Before reaching a conclusion about obviousness, we consider evidence concerning objective indicia of nonobviousness. See Apple, 839 F.3d at 1048. For such evidence to have substantial weight, “its proponent must establish a nexus between the evidence and the merits of the claimed invention.” ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016); see Ancora Techs., Inc. v. Roku, Inc., 140 F.4th 1351, 1361 (Fed. Cir. 2025) (noting that the Board did not err by requiring “a nexus to the challenged claims as opposed to the patent as a whole”). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). The patentee “bears the burden of showing that a nexus exists.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). A rebuttable presumption of nexus arises “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). Whether a rebuttable presumption of nexus arises “turns on the nature of the claims and the specific facts.” Teva Pharms. Int’l GmbH v. Eli Lilly & Co., 8 F.4th 1349, 1362 (Fed. Cir. 2021). The presumption analysis should consider the unclaimed features in the product tied to the objective evidence to assess their significance and impact on the correspondence between the patented invention and the product. Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1418 (Fed. Cir. 2022). When, “for example, the patented invention is only a small component of the product tied to the objective evidence, there is no presumption of nexus.” Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1333 (Fed. Cir. 2019). Absent a presumption of nexus, the patentee may prove nexus by” slip op. at 76

  Patent outcomesUS 10,299,336 mixed
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,299,336
• Innoscience America, Inc. v. Infineon Technologies Americas Corp.Instituted
  PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.

  RulingsInstitution decision

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

    “Institution of an inter partes review is authorized by statute 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6

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

    “customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,686,562
• Lam Research Corp. v. Inpria Corp.All claims unpatentable
  PTAB · Apr 18, 2025 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Final written decision

  Claims 1–12 are unpatentable as anticipated by the ’888 Publication; Patent Owner’s motion to add substitute claims 13–23 is granted.

  RulingsFinal written decision

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

    “priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner

    “priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “d) Conclusion For the reasons discussed above, Petitioner has demonstrated by a” slip op. at 30

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “For these reasons, Patent Owner has met its burden to show by a” slip op. at 34

  Patent outcomesUS 9,823,564 unpatentable
  § 102 anticipationcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 9,823,564
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoSome claims unpatentable
  PTAB · Jan 16, 2025 · IPR2023-01027 · APJ Aaron W Moore · IPR · Final written decision

  Claims 37–70 are unpatentable: claims 37–41, 47, 50–56, 58–59, 60–62, 64–65, and 70 as anticipated by Alden; the remaining challenged claims as obvious over Alden and the listed combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). 3 PCT Patent App. Pub. No. WO 01/70538 A2 (Exhibit 1010). 4 PCT Patent App. Pub. No. WO 01/01038 (Exhibit 1006). 5 U.S. Patent No. 4,970,628 (Exhibit 1007). 6 U.S. Patent No. 6,144,158 (Exhibit 1008). 7 U.S Patent No. 6,049,749 (Exhibit 1009). 8 PCT Patent App. Pub. No. WO 02/04247 A1 (Exhibit 1011). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (PO Resp. 4), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 9

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

    “Claim Construction We construe claims using the standard that would be applied in a civil action under 35 U.S.C. § 282(b), giving terms their ordinary and customary meaning to one of ordinary skill in the art in view of the specification and prosecution history. See 37 C.F.R. § 42.100(b). The Petition asserts that all claim terms should be given their “ordinary and customary meaning.” See Pet. 8. Patent Owner also proposes that the claim terms be given their ordinary meaning, and identifies the “ordinary meaning” for the terms “identify,” “turn,” and “curve,” which we discuss in our analysis below. We otherwise find that that no express claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

  Patent outcomesUS 10,894,503 mixed
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503
• Luminex International Co., Ltd. v. Signify Holdings B.V.Instituted
  PTAB · Sep 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution

  Instituted IPR of claims 1–20 on all petition challenges because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • Director reviewDirector review, grantedGranted

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Paper 12, 5–6. As noted above and explained in the patentability analysis below, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims. See supra § I; infra §§ III.E–III.H.” slip op. at 4

  • PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4

  • PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar” slip op. at 4

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner

    “On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,299,336
• Keysight Technologies, Inc. / Palo Alto Networks, Inc. v. Centripetal Networks, LLCSome claims unpatentable
  PTAB · Aug 5, 2024 · IPR2023-00446 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–4, 6–11, and 13–20 are unpatentable as obvious over Sourcefire and Emerging Threats; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We agree with Petitioner. The identified aspects of Emerging Threats website would have allowed interested parties to locate the rule sets, download the rule sets and make determinations regarding what rule to use in a packet-handling system, such as Sourcefire. Emerging Threats need not be indexed or broadly searchable under Petitioner’s theory of the ground of unpatentability, namely that Emerging Threats was known, one of ordinary skill in the art would have gone to Emerging Threats, and downloaded the emerging-all.rules file, guided by the documentation wiki. As such, we do not agree with Patent Owner’s argument that “the record evidence of this” slip op. at 16

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “With respect to Petitioner’s assertions of collateral estoppel, notably in the Petition at pages 47, 49, 51, 52, and 54, with respect to limitations [1a] through [1d], we agree with Petitioner that Patent Owner is estopped from asserting that Sourcefire is not prior art to the challenged claims, and also estopped from asserting that those limitations are not taught or suggested by Sourcefire, to the extent that the limitations “do not materially alter the question” of patentability relative to the elements of the claims of the ’552 patent. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC, 778 F.3d 1311, 1319 (Fed. Cir. 2015). Independent Claim 1 a. Petitioner’s Assertions As discussed above, we concur with Petitioner that collateral estoppel exists with respect to limitations [1a] through [1d]. Thus, we begin with a discussion of Petitioner’s assertions regarding claim limitation [1e].” slip op. at 21

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

    “how and why persons of ordinary skill in the art would have modified the existing rules to prevent exfiltrations. PO Sur-reply 3. Patent Owner also argues that Petitioner’s assertions to make them “drop” rules, per Sourcefire, relies on what an administrator could have done, not what they would have been motivated to do. Id. at 4–5 (citing Pet. 57–58). We disagree with Patent Owner’s arguments. We continue to be persuaded that one of ordinary skill in the art, combining Sourcefire and Emerging Threats, would have understood that downloaded rules should be reviewed, and it would have been obvious to enable rules that such persons deemed appropriate. We find Dr. Staniford’s testimony to be persuasive on this point. See Ex. 2011, 67:10–68:24, 69:8–72; Ex. 1020, 109. We acknowledge that downloading all of a particualr ruleset from Emerging Threats and enabling all the rules, might have resulted in a drop in performance of the network appliance, but, at the same time, we are significant drop in performance, especially if a potential threat might be sufficient to warrant a minor performance hit. Patent Owner’s counsel acknowledged at oral hearing that instituting all rules of a set in “alert” mode would not result in a decrease in performance, even though some computational outlay must be engaged to engage those alert rules. See Hr’g Tr. 24:24–25:4. We are persuaded that judiciously implementing certain rules would not necessary result in a network device that is unusable. Additionally, there is testimony from Dr. Staniford that “you start out with your rules in alert because there might be false positives. I mean, for the best rule in the world, Snort wasn’t known for false positives in the rules, when you apply them to a large network.” Ex. 2011, 68:2–7. As such, we continue to determine that it would have been obvious, in combining Sourcefire with Emerging Threats, for one of ordinary skill in the art to have downloaded rules and implemented specific rules.” slip op. at 24

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

    “Reviewing all of the evidence of record, we are persuaded that the Petition’s obviousness rationale based on Sourcefire and Emerging Threats is not guided by impermissible hindsight bias. We find persuasive Dr. Staniford’s testimony that one of ordinary skill in the art would have understood that “this rule [SID:2003021] was not directed to looking for instances of exploits or attacks (which would be invisible within the encryption) but rather was looking for exfiltration of some kind of encrypted data.” Ex. 1003 ¶ 228. As discussed by Petitioner, such recognition was also made by Mr. Marinho and Dr. Goodrich, such that the rule would have been understood to possibly prevent exfiltrations. We continue to be persuaded that Petitioner provides that a correspondence exists between the REQUIRE-TLS-1.1-1.2 operator in the ’343 Patent and SID:2003021 in Emerging Threats, in that both detect an SSL/TLS version in application packet header field values to detect exfiltration attempts using out-of-date encryption protocols. Pet. 43 (citing Ex. 1003 ¶¶ 229–230). We are ’343 Patent discloses the interruption of a similar type of exfiltration, without resorting to impermissible hindsight bias, that Patent Owner asserts. Patent Owner has provided no evidence that Petitioner used the specification of the ’343 Patent to find an applicable rule in Emerging Threats, as opposed to the testified-version provided by Dr. Staniford that he recalls “working on a similar feature where we looked for large encrypted transmissions outbound from the network on non-HTTP ports as a possible symptom of exfiltration of large amounts of data.” Ex. 1003 ¶ 228. Thus, we are not persuaded by Patent Owner’s arguments.” slip op. at 30

  Patent outcomesUS 10,567,343 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,567,343
• Mercedes-Benz USA, LLC v. Yechezkal Evan SperoInstituted
  PTAB · Jan 17, 2024 · IPR2023-01027 · APJ Aaron W Moore · IPR · Institution

  The Board instituted review of all challenged claims on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable over the cited prior art.

  RulingsInstitution decision

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

    “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(a) (2018). For the reasons provided below, and based on the record as it now stands, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute inter partes review. B.” slip op. at 2

  • BurdenMixed

    “Regarding the claimed “predefined threshold value” or “predefined illuminance,” Petitioner asserts that “Alden’s system can ‘provide illumination to independently controlled segments [e.g., ‘subsections’] each operable within a range of intensities between the high and the low beam state” and that Alden’s “intensities in between high beam and low beam (e.g., medium) are the claimed ‘predefined threshold value’ which the low beam would be below and the high beam would be above.” Pet. 25. We tend to disagree with this analysis, as it does not appear that a “range of intensities” is a “predefined threshold value” or “predefined illuminance,” if those terms are given their ordinary meaning. We thus conclude that, on this record at least, Petitioner has not shown a reasonable likelihood that Alden anticipates these claims. Regarding obviousness in view of Alden alone, Patent Owner argues that Petitioner has “failed to establish or demonstrate multiple elements that are required to support an obviousness conclusion, including explaining how Alden must be modified (i.e., identifying the differences between the claimed invention and Alden) and explaining why a POSA would be motivated to so modify Alden (i.e., providing some articulated reasoning with some rational underpinning to support an obviousness conclusion).” Prelim. Resp. 37. We agree. It does not appear that Petitioner has provided any basis on which to account for differences between Alden and the challenged claims based on Alden’s disclosures alone.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the alleged invention “would have had an undergraduate degree in mechanical engineering, electrical engineering, automotive engineering, optical engineering, applied physics, computer science, or similar disciplines, along with two years of experience working with intelligent vehicle systems, automotive control systems, or lighting control systems” and that more education could compensate for less experience and vice versa. See Pet. 8–9 (citing Ex. 1003 ¶ 33). Patent Owner “does not dispute Petitioner’s proposed skill level for a person of ordinary skill in the art” (Prelim. Resp. 7), and, as we generally agree that it is consistent with the subject matter disclosed in the ’503 patent and the prior art, we adopt it for purposes of this decision. B.” slip op. at 8

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

    “Petitioner does not seek construction of any claim terms and asserts that “all claim terms [discussed in the Petition] are given [their] ordinary and customary meaning.” Petition 8. Patent Owner asserts that “[n]o claim construction is necessary” at this time because its “arguments for denial do not hinge on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 7. There being no present dispute about the meaning of any claim term, we find that no express claim construction is necessary to resolve the issues addressed in this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy). C.” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 10,894,503
• Continental Automotive Systems, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Dec 5, 2023 · IPR2022-00974 · APJ Aaron W Moore · IPR · Final written decision

  Claims 6–9, 11, 13, 14, 18, 22–25, 27, 28, 32, and 36–38 are unpatentable as obvious over Hwang and McFarland.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the alleged invention “would have had a Bachelor of Science in electrical engineering, computer engineering, or an equivalent field as well as three years of experience in wireless communication technology, or a master’s degree in electrical engineering, or other equivalent degree.” Pet. 6–7 (citing Ex. 1003 ¶¶ 38–40). Patent Owner has not proposed an alternative, and, having reviewed the arguments and evidence in the full record, we adopt Petitioner’s definition, as we did in the Institution Decision, finding it consistent with the ’641 patent and the asserted prior art. C.” slip op. at 9

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

    “Petitioner proposes a construction for the term “radio network information” in dependent claims 9, 14, and 28. See Pet. 7. Patent Owner has not proposed a specific construction for any claim term and has not disputed Petitioner’s proposed construction for “radio network information.” In view of the analysis below, we determine that we need not expressly construe “radio network information,” and that no other claim construction is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 10

  • ExcludeMotion to exclude, deniedDenied
  • Expert testimonyPetitioner expert creditedPetitioner expert discountedMixed

    “Figure from Page 17 of the Akl Supplemental Declaration We find it unclear from this figure and the associated explanation in the Declaration (see Ex. 1038 ¶¶ 30–32) how the map burst and traffic burst blocks in green and blue factor in, because they cannot be received by the 2.5 MHz device. Dr. Akl testified that “McFarland teaches that necessary messages, e.g., including broadcast messages, or any other messages that need to be received by multiple nodes, ‘must be transmitted in a mode that all nodes to which they are directed are able to receive,’ that is, the base mode (e.g., the core-band).” Ex. 1038 ¶ 31 (quoting Ex. 1004 ¶ 60). He then states that one “would understand that because Hwang’s AAS_MAP_Burst_Location_IE contains system information and an index of where the MAP bursts are going to be, it is a message that needs to be received by multiple nodes, and thus is a necessary message that must be transmitted in a mode that all nodes to which they are directed are able to receive.” Id. It does not appear, however, that the blue and green blocks could be part of “broadcast messages” intended for a 2.5 MHz mobile station because they cannot be received by that mobile station. We thus do not agree that McFarland would suggest including map burst blocks in the 2.5 MHz band because they are “broadcast messages.” We also fail to see why the map burst locations would need to be received by multiple nodes, as that seems to be data that is tailored to the mobile device with which the base station is communicating.7 However, we do find it readily apparent that if the base station and the mobile station have determined to communicate using a particular bandwidth, as contemplated by the combination presented in the Petition, the map bursts necessarily would be included in that bandwidth in order for the communication scheme to be successful. The mobile station would need to” slip op. at 16

  Patent outcomesUS 8,953,641 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,953,641
• Wolfspeed, Inc. / Ideal Industries Lighting, LLC D/B/A Cree Lighting et al. v. Cao Lighting, Inc.Some claims unpatentable
  PTAB · Sep 28, 2023 · IPR2022-00847 · APJ Brian D Range · IPR · Final written decision

  Claims 21, 22, 25, 26, 28–30, 32–36, 40, 42–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 are unpatentable over Begemann, Krames, and Allen; claim 41 is …

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedDenied

    “Patent Owner’s argument is unpersuasive because the Krames declaration addresses the Patent Owner Response and is relevant to the issues at hand. We start with an important observation: claim 21 (the only independent claim at issue) is an apparatus claim; the claim is directed to a “semiconductor light source.” Ex. 1001, 9:52. One requirement of this apparatus is that it comprise “at least one semiconductor chip” (id. at 10:1) where the “at least one semiconductor chip is a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts.” Id. at EPRC, 1:34–36. As we explain when addressing claim construction, infra, we adopt Patent Owner’s proposed construction of “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” as meaning “at least one LED chip is capable of emitting light greater than about 40 milliwatts.” See Section III.D, infra (emphasis added). Because of these recitations, Petitioner bears the burden of establishing that the prior art teaches or suggests a semiconductor chip “capable of emitting light greater than about 40 milliwatts.” As explained herein, we determine that in the Petition, Petitioner met this burden by establishing by a preponderance of the evidence that the Krames reference teaches an LED chip that has this capability. Pet. 54 (quoting Ex. 1008, 10). Notably, claim 21 does not require actual operation of anything at greater than 40 milliwatts because claim 21 is not a method claim. Petitioner never had a burden of establishing a method of running the Krames reference’s LED at this power output within a semiconductor light source.” slip op. at 12

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that the challenged claims relate to light fixtures, LED packaging, and LED chip layer structure and that the ’961 patent claims reflect “a hybrid of the light bulb art and semiconductor art.” Resp. 19. The prior art of record, for example, Begemann, likewise reflects “a hybrid of the light bulb art and semiconductor art.” Id. (quoting Pet. 28). Petitioner’s expert, Dr. Lebby, agreed that a person having ordinary skill in the art would need to be “familiar with thermal issues.” Ex. 2015, 26:15– 28:16. While Petitioner’s proposed description of a person having ordinary skill in the art could, in some instances, be sufficient to qualify a person as having ordinary skill, Patent Owner’s proposal is a more complete and accurate description of the level of skill commensurate with the scope of the challenged ’961 patent claims. Patent Owner’s description appears consistent with the prior art and patent specification before us and is supported by witness testimony. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of this Decision, we adopt Patent Owner’s description. We further note that the outcome of our decision would be the same under either party’s asserted skill level.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “particularly relevant.” Resp. 14–15. First, Patent Owner argues that “a light emitting diode (LED) chip configured to output light at greater than about 40 milliwatts” means “at least one LED chip is capable of emitting light greater 9 Petitioner states that “Patent Owner thus contends the recited ‘reflective layers’ can include transparent or semi-transparent layers that exhibit some reflectivity (e.g., SiO2) or an interface between two layers (e.g., the buffer and substrate layers) that exhibit differing indices of refraction.” Pet. 20. Patent Owner frames this as being Petitioner’s “novel construction” (Resp. 16), but Petitioner does not expressly endorse this Patent Owner contention. than about 40 milliwatts.” Resp. 14–15. Patent Owner notes that a district court already adopted this construction and notes that the “LED chip” includes LEDs, LED modules, and LED arrays but excludes laser chips, laser modules, and VCSEL chips. Id. (citing Ex. 2003, 15–18). Petitioner argues that the phrase “needs no construction” and that Petitioner’s grounds meet this construction. Reply 1–2. We adopt Patent Owner’s proposed construction because it is well supported by the record including the District Court’s reasoning. Ex. 2003, 15–18. slip op. at 20

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

    “It is unnecessary to construe any other claim terms in this Decision because none of the parties’ disputes turn on the meaning of other claim terms. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 22

  Patent outcomesUS 6,465,961 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,465,961

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.