- 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 PhillipsPatents in suitUS 8,686,562 - PTAB · Jul 15, 2024 · IPR2024-00537 · APJ John F Horvath · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds, finding a reasonable likelihood that at least one claim is unpatentable over Forutanpour.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“deny institution. Fintiv seeks to “minimize potential conflict between the Patent Trial and Appeal Board (PTAB) and district court proceedings.” Fintiv Memo, 1; see also Fintiv, Paper 11 at 5 (introducing factors to weigh “[w]hen the patent owner raises an argument for discretionary denial . . . due to an earlier trial date”) (emphasis added). Because the district court has not set a trial date, and the trial court statistics indicate any trial is likely to occur months after a Final Written Decision in this proceeding, we see little potential for conflicting Board and district court decisions.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own. slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, a claim is construed “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Only claim terms which are in controversy need to be construed and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner construes the claims to have their “plain and ordinary meaning” and contends “that no terms invoke means-plus-function analysis.” Pet. 17–18. Patent Owner does not contend that any terms require construction. Prelim. Resp. 7. At this stage of the proceeding, because the parties do not dispute the meaning of any claim terms and none appear to require construction, we offer no express constructions for any claim terms. See Nidec Motor, 868 F.3d at 1017.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“of the grandparent application is that they disclose a WTRU having a communication peripheral that can (a) operate in Bluetooth or WiFi mode, (b) use Bluetooth to discover nearby devices and services, (c) transfer data to nearby devices, and (d) use discovered environmental information to determine which components are needed to effect data transfer. But they do not expressly disclose using Bluetooth to discover a nearby WTRU and WiFi to transfer data to that WTRU.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 8,737,933 - PTAB · Jul 15, 2024 · IPR2024-00538 · APJ Lisa A Murray · IPR · Institution
Instituted inter partes review of all challenged claims on all asserted grounds because Microsoft showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–6. As discussed above, factor 1 is neutral and factors 2–4 and 6 weigh against discretionary denial, while factor 5 weighs marginally in favor of discretionary denial. Because our analysis is fact-driven, no single factor determines whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). In the circumstances of this case, considering each Fintiv factor as part of a holistic analysis, we are persuaded that the efficiency and integrity of the system would be best served by granting the Petition to institute an inter partes review. Accordingly, we decline to exercise discretion to deny institution under § 314(a).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“actually or inherently disclose the claim element.” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1306–07 (Fed. Cir. 2008). The passages that Patent Owner cites from the great-grandparent application describe a WTRU that may be capable of both Bluetooth and Wi-Fi communications. Ex. 1282 ¶ 24 (’948 application). They describe detecting another WTRU using Bluetooth. Id. ¶ 34. They also describe transferring data to that target WTRU. Id. ¶¶ 32, 39, 42. None of the passages cited, however, describe using Bluetooth for detection and then switching to Wi-Fi for data transfer within the same transaction. This element of claim 1 is neither expressly nor inherently disclosed in the great-grandparent application.9 It therefore does not have written description support in the ancestor application and cannot benefit from its effective filing date.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableInstituted
“Finally, claim 1 requires the WTRU to transfer, using a Wi-Fi communication, the selected media. Ex. 1201, 10:64–65. Forutanpour discloses that the user’s device may transfer the selected file to the intended recipient “using a wireless technology different from the wireless technology used to establish the wireless link.” Ex. 1204 ¶¶ 4–5. That wireless technology may be WiFi. Id. ¶¶ 81–84 (“messages may similarly be transmitted via another type of wireless communication network, such as a WiFi . . . network”); see also id. at claim 2 (“establishing the wireless link is accomplished using a wireless technology selected from Bluetooth®, ZigBee®, Near Field Communication (NFC), wide-area-wireless IEEE 802.11 (WiFi), infrared (IrDA), and ultrasound”), claim 3 (“The method of claim 2, wherein: . . . transmitting the file sharing message to the targeted computing device is accomplished using a wireless technology different from the wireless technology used to establish the wireless link.”). Thus, on this record, we find that Petitioner is reasonably likely to establish that claim 1 is unpatentable in light of Forutanpour. While this alone is sufficient for institution purposes, we also find that Petitioner is reasonably likely to show that Forutanpour anticipates independent claim 23, which is commensurate in scope with claim 1.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,173,054
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.