• Deltran USA LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  • Strike new argumentNew argument consideredOther

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

  Patent outcomesUS 11,667,203 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,667,203
• Deltran USA LLC / Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Mar 13, 2026 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

    “Petitioner submits there are no formal claim constructions necessary in this proceeding[.]” Pet. 22. Patent Owner also “does not propose any terms need to be construed.” PO Resp. 15. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11

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

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

  • BurdenDecided for patent owner

    “With respect to Petitioner’s allegations that rest on AAPA, we determine Petitioner has failed to show that claims 2, 10, and 11 are unpatentable. Our rules require that a petition for inter partes review must base the asserted challenges on “prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2) and (4). And, a petitioner who relies on applicant admitted prior art as the basis, or part of the basis, of a ground, runs afoul of § 311. Qualcomm, 134 F.4th at 1365; see also USPTO Memorandum, Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (Jul. 21, 2025), available at www.uspto.gov/sites/default/ files/documents/aapa_memo_final__signed.pdf. We acknowledge but reject Petitioner’s position that its combinations discussing AAPA do not “rely” on AAPA but rather rely on U.S. Patent No. 5,793,185 (“the ’185 patent”), described in the ’203 patent as prior art. Pet. Reply 26. A petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104 (b)(4). Here, Petitioner’s contention that the Grounds 2 and 5 actually rely on the ’185 patent when discussing AAPA is inconsistent with the Petition. In particular, the Petition does not cite to or direct our attention to any specific details from the ’185 patent to support its challenges. See generally Pet. 54–57, 76–77. Accordingly, Petitioner has failed to show, by a preponderance of the evidence, that claims 2, 10, and 11 would have been unpatentable over the combination of Richardson, Zhao, and AAPA as well as over the combination of Yu, Paparrizos, and AAPA. Petitioner’s alternative allegations based on Epower-20/Epower-21 are considered below.” slip op. at 18

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

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

  RulingsFinal written decision

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

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

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

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

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

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

  • BurdenMixed

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

  Patent outcomesUS 7,089,443 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,089,443
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Maxell LtdSome claims unpatentable
  PTAB · Oct 30, 2025 · IPR2024-00735 · APJ Jameson Lee · IPR · Final written decision

  Claims 1–6 and 9–13 are unpatentable as obvious; claims 7, 8, 14, and 15 were not shown unpatentable because WinTV was not established as a prior-art printed publication.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The Decision on Institution adopted Petitioner’s proposed level of ordinary skill in the art. Inst. Dec. 8–9. We find Patent Owner’s stated level to be less precise than that proposed by Petitioner in that the modifier “at least” used by Patent Owner imposes no upper bound on the amount of experience possessed by one of ordinary skill in the art. Also, Patent Owner states: “The difference between the Board’s definition and Patent Owner’s does not change the arguments set forth herein.” PO Resp. 5. Thus, we continue to adopt Petitioner’s stated level of ordinary skill in the art.10 C.” slip op. at 8

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

    “We agree with Patent Owner that the district court’s construction is better than Petitioner’s proposed construction, because for reasons indicated by Patent Owner, which are not disputed by Petitioner, settings in the computer, e.g., dedicated folders for each user, are the user profiles, rather than simply data alone of any kind. Further, when asked about the appropriateness of the district court’s construction, counsel for Petitioner expressed that Petitioner has no objection to the Board’s adopting the district court’s construction for “user profile”: JUDGE LEE: So, you’d be fine with just going with the District Court’s construction? MR. HEINTZ: Yes, Your Honor. Tr. 15:22–24. For the foregoing reasons, we adopt the district court’s construction for “user profile,” i.e., “a collection of settings and information associated with a user.”” slip op. at 13

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

    “2. “the first group of video information being configured to allow a user to edit” Petitioner asserts: “This limitation should be construed for the purposes of this proceeding as meaning at least that a user can modify which video information is a part of the first group of video information.” Pet. 21. Patent Owner neither proposed its own construction nor disagreed with Petitioner’s proposed construction. We adopt the meaning as proposed by Petitioner. D.” slip op. at 14

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

    “We do not reach a resolution on the issue of relative cost between a wired LAN versus a wireless LAN, because Petitioner’s assertion that wireless LANs “were often cheaper and easier to install” is nebulous by use of the imprecise word “often.” “Often” cheaper permits “often” not cheaper. Much depends on how many access points would exist in the wired LAN. Petitioner does not discuss that consideration in the context of Horn. Also, we are persuaded by Petitioner’s other stated reasons for implementing Horn’s LAN as a wireless LAN: (1) that a wireless LAN can be more convenient to users, and (2) Baumgartner provides adequate motivation by disclosing transmission of video from server 36 via communications network 34 such as the Internet over link 48 implemented wirelessly to user computer equipment 22 such as a personal computer. Pet. 29–32. We are persuaded that a wireless LAN provides more user convenience by enabling the user equipment accessing the external network to be flexibly located within the range of the LAN without need to have wires installed to run to those locations. That is true whether there is only one user equipment or there are multiple user equipment, one per user. In the case of only one user equipment, the user can access the external network from a wide range of locations and change that location flexibly. In the case of multiple user equipment, one per user, each user can access the external network from his or her own preferred location, and also change that preference at any time without regard to whether wires have been installed to the preferred location.” slip op. at 22

  Patent outcomesUS 11,017,815 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,017,815
• Oneplus Technology (Shenzen) Co., Ltd. v. Pantech CorporationInstituted
  PTAB · Oct 15, 2025 · IPR2025-00762 · APJ Scott B Howard · IPR · Institution

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

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,863,573
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00538 · APJ Miriam L Quinn · IPR · Final written decision

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

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

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

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

  Patent outcomesUS 9,173,054 not shown unpatentable
  Claim construction§ 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 9,173,054
• Microsoft Corporation v. Interdigital Patent Holdings, Inc.No claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00537 · APJ Miriam L Quinn · IPR · Final written decision

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

  RulingsFinal written decision

  • BurdenFwd all claims patentableNot shown unpatentable

    “VI. ANALYSIS OF UNPATENTABILITY Because of our determination that the priority date of December 22, 2009 is appropriate, we conclude that the Forutanpour reference (a U.S. patent application published on April 7, 2011) is not prior art. presented in either Petition. VII. CONCLUSION Having reviewed the argument and supporting evidence of record, and after a full and fair hearing, we determine that Petitioner has not demonstrated by a preponderance of the evidence that any of the challenged claims of the ’933 and ’054 patents are unpatentable.” slip op. at 36

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

    “Thus, we find that the 948 application reasonably conveys to a person of ordinary skill in the art that the inventors contemplated the communication of wireless devices to continue using the known method of file/data transfers via Wi-Fi and that the technique for device discovery using Bluetooth would additionally provide environment information useful for assessing which nearby device has the TapApp functionality. Disclosure of the knowledge of wireless radio dialogue between devices to collect further information to provide a particular location of a device informs a person of ordinary skill in the art that the 948 application was not limited to using only Bluetooth for the method performed by the WTRU, culminating in data transfer.” slip op. at 23

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner

    “sufficiency of the written description, we conclude that the 948 application sufficiently describes Wi-Fi transfer for data transmissions in WTRUs even if the method also uses Bluetooth for selecting target WTRUs. Accordingly, the claims of the ’933 and ’054 patents are entitled to the priority date of December 22, 2009, the date of the 948 application. VI. ANALYSIS OF UNPATENTABILITY Because of our determination that the priority date of December 22, 2009 is appropriate, we conclude that the Forutanpour reference (a U.S. patent application published on April 7, 2011) is not prior art.” slip op. at 36

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

  Patent outcomesUS 8,737,933 not shown unpatentable
  § 102 anticipation§ 112 disclosurecites Phillips
  Patents in suitUS 8,737,933
• Inductev, Inc. v. Witricity CorporationSome claims unpatentable
  PTAB · May 16, 2025 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1, 7–10, 12–16, 18, and 19 are unpatentable over the stated grounds; claims 4–6 were not shown unpatentable because the proposed multi-coil alignment lacked prior-art support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art “would have had . . . a bachelor’s degree in electrical engineering, microelectronics, or equivalent and . . . two to three years of industry or research experience in the field of wireless energy transfer,” and that “a higher level of education or skill might make up for less experience, and vice-versa.” Pet. 6 (citing Ex. 1003 ¶¶ 39–44). Patent Owner does not contest this. See PO Resp. Petitioner’s proposed articulation is supported by testimonial evidence and appears to be consistent with the types of problems and solutions in the ’654 patent. See Ex. 1001, 1:15–28. We adopt it for this decision.” slip op. at 7

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

    “We agree with Petitioner that the evidence does not suggest (and Patent Owner does not explicitly argue) that the terms “transmitting antenna” and “receiving” antenna depart from the ordinary and customary meanings of those terms. Pet. 1–2. However, for the reasons discussed below, the outcome of our decision would be the same whether we adopted Petitioner’s or Patent Owner’s proposed construction. Thus, we need not adopt either party’s proposed construction for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for patent owner

    “spaced configuration are not confined to ferrite cores 32 and 3, and that at least a component of the flux lines will escape the cores. See Ex. 1032 ¶¶ 48–52; Ex. 1038 ¶ 54 Fig. 2. Indeed, the evidence suggests (and Dr. Horenstein acknowledges in his first declaration) that at least a component of flux will escape the core of even a traditional transformer. See Ex. 1032 ¶¶ 45–47; Ex. 1044, 6; Ex. 2001 ¶ 27. In his second declaration, Dr. Horenstein provides contrary testimony that in Odachi’s open configuration during alignment, cores 32 and 3 “act to confine or guide the magnetic flux lines, rather than radiate them into free space,” and “the flux lines would [not] leave the gap area and enter into the space distal to the magnetic circuit.” Ex. 2010 ¶ 69. But in view of Dr. Horenstein’s contrary position in his first declaration, and the lack of supporting evidence in his second, we do not find it credible. 37 C.F.R. § 42.65(a) (2022) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Apple Inc. v. MPH Techs. Oy, 28 F.4th 254 (Fed. Cir. 2022).” slip op. at 24

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

    “(4) Analysis We are persuaded by Petitioner’s argument that during the alignment process in Odachi corresponding to claim 13, there is a “spaced distance between the primary inductive coupler [230] and the secondary inductive receptacle 2” which is “reduced gradually and electromagnetic induction occurs between the coupler to the receptacle when the former coupler comes close to the latter receptacle.” Ex. 1005, 6:1–6. Thus, prior to any contact or precise alignment between the two cores, “an electromotive force is induced in the secondary coil 4 and this induced force is increased with the decrease in the spaced distance.” Id. at 6:6–8. At least in that spaced configuration, the evidence of record suggests that primary coil 31 produces a near-field component of flux into free space (the air space between the coils where there is no intervening core material) that is intercepted by secondary coil 4 to effect resonant inductive coupling, and that secondary coil 4 intercepts and receives the near-field component of flux in free space that is generated by primary coil 31 to effect resonant inductive coupling. See Ex. 1032 ¶¶ 48–52, 55. Thus, we find that Odachi discloses a “transmitting antenna” (coil 31) and a “receiving antenna” (coil 4) under Patent Owner’s proposed construction. We would reach the same finding under Petitioner’s proposed broader construction because the evidence suggests that Odachi’s coils 31 and 4 would have been considered “antennas” under the parties’ uncontested definition of that term, which is “a device that radiates and/or receives radio waves.” See id. ¶¶ 43–47, 53–54; Ex. 1032 ¶ 15 (Dr. Allen agreeing with this definition of “antenna”); Ex. 2001 ¶ 25 (Dr. Horenstein agreeing with this definition of “antenna”)). In addition, Petitioner persuasively shows that the free space between Odachi’s coils in the spaced configuration includes the “near-field region,” which includes the induction field around primary coil 31. See Ex. 2006, 498; Ex. 1045, 5:4–7; Ex. 1032 ¶¶ 53–54). Dr. Horenstein’s testimony does not contradict this. Although he points out that there are separate terms for inductive, near, and far fields, he also acknowledges that “[t]he region of space closer to the antenna than the far field is the near-field region.” Ex. 2010 ¶ 37 (citing Ex. 2006, 275).8” slip op. at 22

  Patent outcomesUS 8,466,654 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,466,654
• TCL Electronics Holdings Ltd. / TCL Industries Holdings Co., Ltd. v. University Of Rochester (Intellectual Ventures I, LLC)Institution denied
  PTAB · Feb 13, 2025 · IPR2024-01245 · APJ Thu A Dang · IPR · Institution

  The Board denied institution on claims 1, 3, 4, 5, 8, 10, and 12 under § 314(a), finding the Fintiv factors favored denial and the petition did not show compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 9

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

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Thus, although Petitioner contends that Njølstad implements a dynamically changeable frequency for each domain wherein a local “rate requirement can dynamically be configured” such that “the locally generated clock rate is just high enough to perform the actual processing task” at that rate (Pet. 31 (citing Ex. 1009 § IV.D)), such teaching merely supports Petitioner’s contention that the frequency is dynamically changeable at the local level (id.). However, as Patent Owner points out, such showing is not a compelling disclosure of the frequency generation being independent of the frequencies of the other domains, as required by the challenged claims. Prelim. Resp. 28–34. For the foregoing reasons, we conclude that Petitioner has not presented compelling merits that Njølstad teaches “the frequency being dynamically changeable independently of the frequencies of the clock signals generated for others of the plurality of domains” as recited in claim 1 and similarly recited in claim 8.” slip op. at 25

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “However, Patent Owner argues that Iyer published after the invention to the ’443 patent was actually reduced to practice. Prelim. Resp. 27–28. In particular, Patent Owner provides evidentiary testimonies of Dr. Kaeli (Ex. 2001) and Mr. Albonesi (Ex. 2003) to support its contends the ’443 patent incorporates by reference a paper authored by the inventors and published in February 2002 (Ex. 2005), which demonstrates conception by providing a full written description of the claimed invention. Prelim. Resp. 6–16. According to Patent Owner, a simulation described in the paper embodied the invention in a tangible form, wherein the simulation described in the paper showed that the invention worked for its intended purpose. Id. at 16–19 (citing Exs. 2001, 2003, 2005). Similarly, Patent Owner contends that the application from which Soerensen issued was filed on August 29, 2002, which is after the invention date of the ’443 patent. Prelim. Resp. 35. According to Patent Owner, while Soerensen claims priority to the Soerensen Provisional Application (Ex. 1022), the passages from Soerensen relied on in the Petition are not entitled to the benefit of the filing date of the Soerensen Provisional Application because the subject matter was not disclosed in the manner provided by 35 U.S.C. § 112. Id. We recognize potential merits to Patent Owner’s position. That is, we do not find compelling Petitioner’s contention that the challenged claims would have been obvious Iyer or Soerensen.” slip op. at 31

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,089,443
• Inductev, Inc. v. Witricity CorporationAll claims unpatentable
  PTAB · Feb 13, 2025 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Final written decision

  Claim 16 was cancelled on Patent Owner’s motion; claim 17 was held unpatentable as obvious over Cook ’554 and over Lee and Cook ’523.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Based on the effective filing date of the ’719 patent, we apply the pre-AIA version of § 103. by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description. PO Resp. 14. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “[i]t will be appreciated that a network of capacitors, as used herein, may in general refer to any circuit topology including one or more capacitors, including without limitation any of the circuits specifically disclosed herein using capacitors, or any other equivalent or different circuit structure(s), unless another meaning is explicitly provided or otherwise clear from the context. Id. at 52:32–38 (emphasis added). Thus, the ’719 patent expressly defines the phrase “a network of capacitors” as any circuit topology including one or more capacitors. Id.” slip op. at 7

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “Patent Owner’s argument is unavailing. Even if Patent Owner is correct that elements E and F in Figure 4-12 of the Cook Provisional only represent the delivered power level (not the received power level), other portions of the Cook Provisional disclose tuning the resonant frequency of the resonant circuit based on the received power level. See Pet. Reply 5–6. In particular, the Cook Provisional states that “[t]he control system of the receiver is in charge of . . . antenna tuning control.” Ex. 1006, 31. The Cook Provisional also states that “[t]he receiver[’]s control system may determine the model parameters using specific measurements (e.g. antenna current and voltage, input power, etc.) and calibration routines.” Id. (emphasis added). Thus, the Cook Provisional discloses tuning the resonant frequency based on input power. Id.” slip op. at 10

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

    “D. Motion to Amend Patent Owner’s non-contingent Motion to Amend requests that we cancel claim 16. Mot. Amend 1. Petitioner does not oppose Patent Owner’s request. Id. We grant Patent Owner’s unopposed request to cancel claim 16, and, as a result, we do not reach the asserted grounds for claim 16.” slip op. at 8

  Patent outcomesUS 8,461,719 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,461,719

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.