• Juniper Networks, Inc. v. Monarch Networking Solutions LLCAll claims unpatentable
  PTAB · Jul 29, 2025 · IPR2024-00485 · APJ Kevin F Turner · IPR · Final written decision

  Claims 1–10 are unpatentable as obvious over Li and Wu; the Board did not reach the instituted Li and Li-2 or Li-only grounds.

  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 “a Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related subject, and three years of work experience in computer networking, including experience with the IPv4 and IPv6 protocols, or a related field.” Pet. 10 (citing Ex. 1003 ¶¶ 53–55). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Samrat Bhattacharjee. Ex. 1003 ¶¶ 53–55. Patent Owner does not dispute Petitioner’s description. PO Resp. 19–20. 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 board ownDecided for petitioner

    “As we determined in the Institution Decision (Dec. on Inst. 6), we continue to adopt the constructions of the terms previously construed by the district court. With respect to the claim term “domain,” we agree with Petitioner that the ’844 Patent defines “domain” as “[a] telecommunications network administered by an operator.” Pet. 31 (quoting Ex. 1001, 1:30–31). We further agree that the ’844 Patent does not require the IPv4 and IPv6 domains to each be controlled by distinct entities. See Ex. 1003 ¶ 91.” slip op. at 6

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Patent Owner’s arguments are unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213– 214. For example, the ’844 Patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 15

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

    “Patent Owner’s arguments are unavailing. First, the evidence of record indicates that Li and Wu are analogous art. Pet. 70; Ex. 1003 ¶¶ 213– 214. For example, the ’844 Patent, Li, and Wu are all directed to the same field of endeavor, namely, computer networking and routing data packets. Ex. 1001, 1:17–21; Ex. 1003 ¶ 213; Ex. 1037, 1; Ex. 1039, 9. Second, the evidence of record indicates that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited teachings of Li and Wu. Pet. 69; Ex. 1003 ¶ 210. As discussed above, Petitioner relies on Wu’s teaching that an IPv6 destination address includes a destination port number. Pet. 68–69; Ex. 1003 ¶ 207. Even if Patent Owner is correct that Li and Wu address the interoperability of IPv4 and IPv6 networks from different perspectives, a person of ordinary skill in the art would have reasonably expected that Wu’s destination port number could be incorporated into the unused padding in Li’s IPv6 destination address. Pet. 69–70; Ex. 1003 ¶¶ 210–211.” slip op. at 15

  Patent outcomesUS 8,451,844 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,451,844
• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Jun 17, 2025 · IPR2024-01334 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “Id. at 6:18–26. Petitioner argues that “an ATM is not a party to a transaction—the parties are the user and the bank, and the ATM is the mechanism through which the bank’s accounts are accessed.” Reply 5–6 (citing Ex. 1026 ¶ 13). Similarly, Petitioner argues, a file “is not a principal party to a transaction—rather the user and the provider of the file (e.g., a vendor) are the parties.” Id. at 6 (citing Ex. 1026 ¶ 13). Petitioner makes similar arguments for financial accounts, savings accounts, medical records, and insurance information. Id. (citing Ex. 1001, 6:18–26; Ex. 1026 ¶ 14). We agree with Petitioner. The specification, here, gives several examples where the application being accessed is not, itself, a party to the transaction, but rather an asset of one of the parties or the mechanism by which the parties transact.” slip op. at 13

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term ‘access message’ to mean ‘a signal or notification enabling or announcing access.’” PO Resp. 7. However, Patent Owner argues that applying “access message” to Ludtke’s transaction confirmation “fails to account for the claim term ‘access to an application.’” Id. at 7–8. Rather, Patent Owner argues, a transaction confirmation “is a message announcing that a transaction has been completed.” Id. at 8. Patent Owner contends that “[t]he plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object wherein the object is the claimed application.” Id. (citing access, MERRIAM-WEBSTER DICTIONARY (available at https://www.merriam-webster.com/dictionary/access)). Here, Patent Owner appears to retreat on its agreement that “access message” can include a signal “announcing” access, and suggests that we limit “access message” to a signal “enabling” access. However, Patent Owner then returns to its agreement, stating that “[i]t would be improper to construe ‘access message’ as something other than a signal or notification enabling or announcing a user’s access to (ability to enter, communicate with, or make use of) an application.” Id.” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “As explained above, a person of ordinary skill in the art would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent, while additional education could substitute for professional experience, and significant work experience could substitute for formal education. Mr. Carrothers claims to be “a financial services and retail leader with approximately thirty years of experience working in a variety of leadership roles in retail payments.” Ex. 2018 ¶ 1. He lists professional and consulting experience with retail payments, operational and risk management of a credit card portfolio, and payment insurance and acceptances in stores and online. Id. ¶¶ 1–5. His Curriculum Vitae (Ex. 2018, Appendix A) lists education including a Bachelor of Business Administration and a Master of Business has either the technical education or the technical experience to be a person of ordinary skill in the art. In response to Petitioner’s challenge to Mr. Carrothers’ qualifications, Patent Owner does not contend that Mr. Carrothers is at least a person of ordinary skill in the art.7 Rather, Patent Owner argues that “[t]o put the asserted portions of Ludtke in context, Mr. Carrothers provided testimony regarding the processing of credit and debit card payments with respect to online transactions based on his expertise and experience with retail payments.” Sur-reply 1. Patent Owner uses Mr. Carrothers’ testimony to support arguments regarding the timing and parties to the communications generated by Ludtke’s system, and to support arguments that the TPCH is a party to Ludtke’s transactions. PO Resp. 13–17 (citing Ex. 2018 ¶¶ 20–31). We find that Mr. Carrothers testifies on technical details regarding unpatentability, and that a declarant testifying as to such subject matter should have at least ordinary skill in the art. Thus, Mr. Carrothers’ testimony is entitled to no weight. See Kyocera, 22 F.4th at 1376–77.” slip op. at 39

  Patent outcomesUS 8,886,954 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,886,954
• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Jun 17, 2025 · IPR2024-00233 · APJ David C Mckone · IPR · Final written decision

  Claims 1–7, 10, 12–19, and 22–27 are unpatentable as obvious over Ludtke alone or Ludtke and Kon.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In short, Patent Owner points to no language in the specification limiting the claims to transactions in which the application being accessed is, itself, a party to the transaction and Petitioner points to several examples in which the application being accessed is not a party to the transaction. Thus, Patent Owner has provided no persuasive basis to depart from the plain and ordinary meaning of the claims.” slip op. at 14

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Petitioner notes that a District Court has construed “access message” to mean “[a] signal or notification enabling or announcing access.” Pet. 4 (citing Ex. 1009, 3; Ex. 1010, 15, 20). However, Petitioner “maintains that the Board need not construe the term ‘access message.’” Reply 6. Patent Owner states that it “agree[s] on the construction of the term” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative in its papers.” slip op. at 18

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

    “3. Differences, if any, between claims 1, 2, 4–7, 10, 12, 13, 15, 16, 18, 19, and 22–27 and Ludtke; reasons to modify Regarding claim limitations 1ai, 1aii, and 1aiii, Petitioner argues that Ludtke teaches persistently storing, in a user identity/account information block of the transaction device, biometric information (e.g., fingerprint, retinal scan, voice, DNA, hand profile, face recognition), a plurality of codes and other values comprising a device ID code uniquely identifying the transaction device (e.g., globally unique silicon ID (GUID), magnetic strip, bar codes), and a secret decryption value (e.g., public key infrastructure (PKI) public keys and private keys). Pet. 9–21 (citing Ex. 1005, 5:11–20, 8:63–67, 9:18–25, 10:64–67, 11:1–5, 13:27–29, 13:39–41, 14:13–21, 19:9– 14, 19:29–40, 23:11–19, 30:18–27, 37:39–45, 38:1–3, 38:9–21, 38:25–29, 38:40–61, 39:7–18, 40:5–26, Figs. 7B–7C, 27, 33; Ex. 1003 ¶¶ 73–94). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. Based on Petitioner’s evidence, we find that Ludtke teaches claim limitations 1ai, 1aii, and 1aiii. More particularly, we find that Ludtke’s fingerprint, retinal scan, etc., are “biometric data”; that Ludtke’s GUID, magnetic strip, etc., are examples of “a device ID code uniquely identifying an integrated device”; and that PKI keys are examples of “a secret decryption value.” transaction device requests and receives a fingerprint sample or other biometric data. Id. at 21–22 (citing Ex. 1005, 14:33–42, 14:40–46, 16:47– 50; Ex. 1003 ¶¶ 95–96). As to claim limitation 1c, Petitioner argues that Ludtke’s transaction device compares the fingerprint sample to stored authorized samples to determine a match. Id. at 22 (citing Ex. 1005, 14:40– 46; Ex. 1003 ¶ 97). Patent Owner does not contest Ludtke’s applicability to these aspects of claim 1. We agree with Petitioner and find that Ludtke teaches claim limitations 1b and 1c.” slip op. at 23

  Patent outcomesUS 8,886,954 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,886,954
• Innolux Corporation v. Phenix Longhorn LLCInstitution denied
  PTAB · Jun 9, 2025 · IPR2025-00044 · APJ Michael J Strauss · IPR · Institution

  The Board denied institution because the Petition violated Rule 42.104(b)(3) and did not show a reasonable likelihood that claims 1–3, 5, and 6 were unpatentable as obvious.

  RulingsInstitution decision

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

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSA) “would have had at least a bachelor of science degree in physics, electrical engineering, or the equivalent thereof and three (3) years of experience in circuit design or display technologies.” Pet. 12 (citing Ex. 1003 ¶ 24). According to Petitioner “[s]uch a POSA would have had knowledge of integrated circuits, gamma correction, and storage of gamma correction voltage values within memory, and would have understood how to search available literature for relevant publications.” Id. (citing Ex. 1003 ¶ 24). Patent Owner applies Petitioner’s definition for the purposes of the Preliminary Response. Prelim. Resp. 2. For purposes of this Decision, and based on the current record, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art. Pet. 12. This assessment is consistent with the ’788 Patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 8

  • BurdenDecided for patent owner

    “Accordingly, Petitioner has not identified corresponding structure for performing the recited functions of “optimizing . . . gamma reference voltage levels using means for executing a predetermined algorithm according to a predetermined criteria and data sensed by . . . at least one sensor, wherein said means for executing said predetermined algorithm is separate from [a] display to achieve [a] desired gamma curve” as required under 37 C.F.R. § 42.104(b)(3). Because Petitioner has not provided constructions, either rebutting the presumption that “means for executing” is a means-plus-function term, or identifying corresponding structure if it is a means-plus-function term, Petitioner has violated Rule 104(b)(3).” slip op. at 20

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “and 5 recites “means for executing.” Ex. 1001, 7:36–40, 8:35–37. The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. See Williamson, 792 F.3d at 1348. Consistent with Patent Owner’s arguments (Prelim. Resp. 36–39), the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted. Furthermore, even if we were to consider Petitioner’s newly presented argument that “[t]he plain and ordinary meaning of ‘means for executing a predetermined algorithm . . . ’ connotes a general-purpose processor, which is understood as structure sufficient to perform the function” (Pet. Reply 5), such argument is not persuasive as it is not supported by evidence earlier presented in the Petition or otherwise. Furthermore, even if the plain and ordinary meaning of means for executing a predetermined algorithm were a general-purpose processor, for a computer implemented means-plus-function term the corresponding structure must be the specific algorithm implemented by the processor as argued by Petitioner. Pet. Reply 6.” slip op. at 16

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,557,788
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Instituted
  PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution

  The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13

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

    “Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2

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

    “TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,591,706
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution denied
  PTAB · Apr 25, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “experience working on the development of materials or components for electronic devices such as batteries.” Pet. 2. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less work experience, and additional work experience could compensate for less formal education.” Id. Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’014 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

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

    “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). in this proceeding.” Pet. 3. Patent Owner contends that “[t]he Board need not construe any term in order to determine that institution should be denied.” Prelim. Resp. 4. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 8

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

    “For these reasons, we are not persuaded that Petitioner sufficiently establishes that a POSITA would have been motivated to modify Hanafusa in light of Dobashi with a reasonable expectation of success as Petitioner contends. Accordingly, we determine that Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claim 1, and claims 4 and 8 that depend therefrom, would have been obvious over the combined teachings of Hanafusa and Dobashi.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “Petitioner also focuses on Hanafusa’s teaching that all known methods can be used to make a rough surface low-profile, and Dobashi’s teaching that RSm can be used as an indicator for judgment of the surface, to support its contention that a POSITA would have been motivated to apply Dobashi’s RSm to further achieve Hanafusa’s purpose, without explaining how and why that would be the case. In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness and is rough when RSm is small.” Id. at 3:1–3, 6:27–29. Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66– 3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66–3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 11,346,014
• Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution denied
  PTAB · Apr 23, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over either asserted § 103 ground.

  RulingsInstitution decision

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

    “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 deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had at least an undergraduate degree in materials science, chemical engineering, electrical engineering, or related field, or equivalent knowledge, training, or experience, with at least two years of experience working on the development of materials or components for electronic devices such as batteries.” Pet. 4. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less 7 We refer to the page numbers added by Petitioner to the bottom-center of the page. formal education.” Id. (citing Ex. 1003 ¶ 10). Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’689 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))).” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We are not persuaded, on this record, that Petitioner adequately establishes that Khatibi discloses a CTE in the claimed range of 16 to 22 µm/(m·°C.). Petitioner’s argument that Khatibi’s reported values meet this claim limitation are based solely on Dr. Randall’s testimony that Khatibi’s measurement method would produce results that would not significantly differ from results determined using the claimed method. See Pet. 16–18 (citing Ex. 1003 ¶¶ 56–60). Dr. Randall’s testimony, however, is largely conclusory and unsupported by adequate explanation and/or objective evidence. For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added). to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (finding that “the Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.” (quoting Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985))); see also In re Ethicon, Inc., 844 F.3d 1344, 1348, 1352 (Fed. Cir. 2017) (concluding that the Board properly gave “little weight” to conclusory expert testimony of objective indicia). Because Petitioner offers Dr. Randall’s testimony to supply a limitation missing from the prior art, namely, the CTE measurement method, and we give Dr. Randall’s unsupported and conclusory testimony little weight, we are not persuaded that Petitioner establishes a reasonable likelihood of showing that Khatibi discloses limitation [1d].” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “second surfaces of the electrolytic copper foil ranges from 3 to 92.” Ex. 1001, 13:62–63. Petitioner contends that “Kim teaches that the electrolytic copper foil (e.g., untreated or treated copper foil) having Rz less than 2 µm is advantageous toward battery efficiency and performance,” and, similarly, Griesi describes the use of untreated electrolytic copper foil with an Rz value less than 2 µm in printed circuit boards that are compatible with secondary batteries. Pet. 58–59 (citing Ex. 1012, claim 2, ¶¶ 13, 25, 27; Ex. 1003 ¶ 157). In particular, Petitioner notes that Griesi’s Figure 3.16 describes an “Rz value of 1.2 µm.” Id. at 59 (citing Ex. 1015, 53–54; Ex. 1003 ¶ 158). Petitioner asserts that “Dr. Randall explains that a POSITA would have also recognized another surface roughness-related parameter, Rpc, in Griesi as a potentially useful parameter that can be optimized to further enhance uniformity or generally improve Kim’s copper foil surface, for example, to prevent wrinkles or achieve other advantageous effects.” Id. (citing Ex. 1003 ¶ 159). Although Dr. Randall demonstrates that Griesi’s Pc (or Rpc) value is 19.2 over a 4 mm sampling length (Ex. 1003 ¶ 155), Petitioner does not contend that Griesi addresses this value, or indicates any benefit that might be derived from its use. Instead, Griesi’s Pc value appears to be an incidental finding, which is not discussed or analyzed in the reference. See incidental, unexamined finding would lead a POSITA to import Griesi’s Pc value into Kim’s copper foil, absent a hindsight desire to reconstruct the claimed invention. As such, Petitioner’s arguments with respect to Kim and Griesi are not persuasive. See Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” (internal quotations marks omitted)). Thus, we are not persuaded, on this record, that the combined disclosures of Kim and Griesi teach all of the elements of limitation [1g].” slip op. at 23

  § 103 obviousnesscites Phillips
  Patents in suitUS 10,811,689
• Mobileye Global, Inc. v. Facet Technology Corp.Rehearing denied
  PTAB · Apr 22, 2025 · IPR2024-01110 · APJ Sean P O’Hanlon · IPR · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving institution in place on claim 15 based on the Gallagher–Lumia obviousness challenge.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “or overlooked any matter. As we explained in the Institution Decision, the ’255 patent discloses that the recited characterization profile allows the system to convert the intensity values measured by the intensity sensor into luminance values based on the sensor’s ability to sense the particular color of the measured light. Inst. Dec. 21; Ex. 1001, 11:41–48. The ’255 patent states that “the light intensity sensor’s 280 ability to sense . . . a particular color” is the “the light intensity sensor’s 280 profile for [that] particular color.” Ex. 1001, 11:45–47. The ’255 patent further states that this “[l]ight intensity sensor 280 characterization is essential for high precision computations.” Id. at 11:48–49. Thus, as we stated in the Institution Decision, the recited “characterization profile” refers to a conversion factor used to convert the measured light intensity into luminance. As this conversion factor is based on the light intensity sensor’s ability to sense the particular color of light reflected by the road sign, we agree that it is empirical information. Patent Owner fails to explain adequately how the fact that the ’255 patent discloses storing multiple conversion factors for multiple colors of measured light in a digital look-up-table (see id. at 11:56–59 (“The light intensity sensor characterization 275 is empirical information about the light intensity sensor 280 that is used to create the [look-up table] 475.”)) has any bearing on our interpretation.” slip op. at 4

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

    “Owner to the Institution Decision where we fully addressed Patent Owner’s contentions. See Inst. Dec. 29–31. As we explained, “Petitioner proposes to incorporate Lumia’s teaching of measuring luminance values into Gallagher’s system, and argues that an ordinarily skilled artisan would have had a reasonable expectation of success given Gallagher’s disclosure of determining calibration factors for each individual sensor in the array of sensors.” Id. at 30. In other words, Petitioner proposes to use Gallagher’s array of sensors to measure luminance in the manner taught by Lumia. We also explained in the Institution Decision how Lumia discloses using a video camera to measure the luminance of a road sign. Id. at 27–29. We further explained that, in the Petition, “Petitioner sets forth reasoning with rational underpinning to support its contentions that it would have been obvious to combine the teachings of Gallagher and Lumia” by, for example, “argu[ing] that implementing Lumia’s teaching of determining the luminance of traffic signs in Gallagher’s system would allow Gallagher’s system to calculate the retroreflectivity of road markers as a means of identifying any markers that do not meet minimum acceptable reflectance levels.” Id. at 30–30 (citing Pet. 46). We further explained that Petitioner’s arguments were supported by the testimony of it witness, Dr. Thorpe. Id. at 31 (citing Ex. 1003 ¶ 116).” slip op. at 7

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,335,255
• Solus Advanced Materials Co, Ltd. v. SK Nexilis Co., Ltd.Institution denied
  PTAB · Apr 22, 2025 · IPR2024-01460 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution of review of claims 1–11 because the Fintiv factors, including the early trial date and close merits case, favored discretionary denial.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution 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 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.” Institution of inter partes review, however, 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. A. Real Parties-in-Interest” slip op. at 2

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

    “Board’s projected statutory deadline to issue a final written decision. Fintiv, Paper 11 at 9. “If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.” Id. Conversely, “[i]f the court’s trial date is earlier than the projected statutory deadline,” this has generally weighed “in favor of exercising authority to deny institution.” Id.” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Petition under 35 U.S.C. § 325(d) because the same or substantially the same art and arguments were before the Examiner during prosecution and Petitioner’s has not demonstrated that the Examiner erred in a material manner when allowing the claims. Pet. 17–18. Given our discretionary denial of the Petition in view of the Fintiv factors, we do not address Petitioner’s further arguments with respect to § 325(d).” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner applies Petitioner’s recited level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 4. Upon review of the parties’ arguments and the prior art of record, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan for purposes of this decision as it appears consistent with the disclosures of the ’090 patent and the prior art of record. C. Claim Construction” slip op. at 9

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,480,090
• Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.All claims unpatentable
  PTAB · Apr 1, 2025 · IPR2021-00563 · APJ Kevin F Turner · IPR · Remand

  On remand, the Board held claim 9 unpatentable as obvious over Agin and Chen, finding Agin teaches the initial power adjustment and the combination teaches the offset determination.

  RulingsRemand decision

  • RemandOther

    “Reviewing Patent Owner’s arguments and Petitioner’s assertions, we remain persuaded that one of ordinary skill in the art would have applied the previous power level, i.e., the power level prior to the interruption, and also an offset according to the process illustrated in Agin’s Figure 2. Agin makes clear that its processes in Figure 2 are run “[i]f transmission is not resumed after a transmission interruption” and “[i]f transmission is resumed after a transmission interruption.” Ex. 1004 5:44–50. Figure 2 of Agin is used to make a determination of what the power level would be after an interruption, and that process should be followed, for the first transmission, as well as subsequent transmissions. Agin does not address a separate procedure for the initial transmission after an interruption because the process in Agin’s Figure 2 is generally applicable to all interruptions. This understanding comports with Dr. Ding’s testimony, discussed above, that we credit. See Ex. 2002, 115:13–16, 113:16–22, 110:13–16.” slip op. at 23

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

    “We disagree with Patent Owner’s arguments and continue to be persuaded that there was sufficient motivation to combine Agin and Chen. See FWD 25–26. Petitioner cites multiple rationales for the combination of Agin and Chen, including the benefits of Chen’s techniques, the predictability of such a combination, improvements in performance and transmission quality, reducing uncertainty, smoothing power levels, and argues that these approaches would have had a reasonable expectation of success. Pet. 17–19. Although Agin and Chen are directed to different problems, with different solutions, we discern no negative teaching that would proscribe their combination, and we can envision, via the arguments made in the Petition, combining aspects of each to improve the resulting system.” slip op. at 29

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Ding’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2-3 years of experience in wireless communication systems.” Pet. 5 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s identification of the level of skill in the art. PO Resp. 17. As such, we continue to adopt and apply Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See DI 5; FWD 6.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We disagree with Patent Owner’s arguments, as we did in the Final Written Decision. See FWD 25–26. We acknowledge the different aims and solutions detailed in Agin and Chen, but we are not persuaded that they are sufficiently different that aspects of Chen could not be utilized in Agin. We also acknowledge that Dr. Jackson’s testimony is clear and he testifies that Chen is sufficiently different and that the processes of Chen would not be readily adaptable to Agin. Weighing the testimonies of Drs. Ding and Jackson, we determine Dr. Ding’s testimony to be more persuasive as to the combination. For example, we concur with Dr. Ding that handover is directly related to communication interruptions in that the handover mechanism exists in order to try to avoid interruptions. Ex. 1003 ¶¶ 67–68, 102, 105–108; Ex. 1111 ¶ 47. Dr. Ding’s testimony is applied to support the conclusion that one of ordinary skill in the art would have been motivated to make the combination. Patent Owner asserts that such a characterization is misleading (PO Sur-reply 20), but we are persuaded that Dr. Ding’s testimony demonstrates overlapping aspects of the disclosures of Agin and Chen and support the Petition’s rationales for their combination.” slip op. at 30

  Patent outcomesUS 8,195,216 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,195,216

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.