- ARM Ltd v. Daedalus Prime LLCAll claims unpatentablePTAB · Sep 9, 2026 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Final written decision
Claims 1–7, 11–14, and 16–19 are unpatentable as obvious over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have (1) at least a bachelor’s degree in electrical engineering, computer engineering, physics, or a similar field, and (2) approximately two years of industry or academic experience in a field related to microelectronic architecture design, including experience with cache management in multicore systems-on-a-chip (SoCs). (Ex-1003 ¶¶50-51.) More related education would compensate for fewer years of work experience (and vice versa). (Ex-1003 ¶¶50-51.) Pet. 4–5. This definition was adopted in the Institution Decision. Inst. Dec. 13. Patent Owner does not dispute the finding. PO Resp. 5–6. For the purpose of our Decision, we maintain the finding made in the Institution Decision.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“1. “a single caching agent” (claim 1) We note a construction issue from the ’1344 IPR where we construed a “single caching agent,” which is recited in claim 1 here. ’1344 IPR Final Decision, 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18. We adopted that construction in our Institution Decision in this case. Inst. Dec. 15.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Remaining claim terms Independent claims 11 and 16 include different language as to “caching agent.” Claim 11 recites “a caching agent.” Ex. 1001, 8:18. Claim 16 similarly recites “a first caching agent.” Id. at 8:47–48. Neither claims 11 or 16 includes claim 1’s recitation of “distributed portions. The “caching agent” limitations of claims 11 and 16, are not at issue. Accordingly, no construction is necessary.” slip op. at 18
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner
“(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action. Pet. Br. 2. Further, Petitioner alleges the ’1344 Final Decision was not appealed by Patent Owner and is therefore a basis for issue preclusion. Id. (citing Power Integrations, Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1311–12 (Fed. Cir. 2019)).” slip op. at 19
Patent outcomesUS 8,984,228 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,984,228 - Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentablePTAB · Sep 8, 2026 · IPR2025-00440 · APJ Tawen Chang · IPR · Final written decision
Claim 21 is unpatentable as obvious over Mizumura with either the ’498 PCT or McClymont; the Revised Contingent Motion to Amend proposing claim 22 is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“overlap to a significant degree, i.e., a person with a Ph.D. in a discipline related to biological sciences and having had at least two years of work experience. However, the parties’ proposals differ slightly in the specific subjects in which a POSA would have had a doctoral degree, and whether the person’s work experience must have been directly related to horseshoe crab Factor C. As an initial matter, we find that a rigid requirement as to the subject of a POSA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 19; Ex. 1065, 99:14–100:3. with respect to the claims of the ’318 patent would have had a Ph.D. in molecular biology, biochemistry, or a related discipline, and about two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction The parties agree that “the terms in claim 21 can be afforded their plain and ordinary meaning for purposes of this proceeding” without further construction. Pet. 19–20; PO Resp. 11. Because express claim construction is not needed to resolve the issues in this case, we need not, and do not, construe expressly any claim term for purposes of 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 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Carrying Out the Invention section, that “[t]he Factor C of the present invention is a Factor C derived from a horseshoe crab,” and states later in the same section that “[e]xamples of the horseshoe crab include . . . Limulus polyphemus.” Ex. 1006, 40. However, none of the remaining portions of ’767 application cited by Patent Owner relate directly to L. polyphemus; instead, the remaining portions of ’767 application cited by Patent Owner are directed to other species, in particular the Japanese horseshoe crab T. tridentatus. Further, Patent Owner’s witness, Dr. Schaefer, conceded that the ’767 application does not contain Factor C sequence information for L. polyphemus. See, e.g., Ex. 1067, 44:25–45:23. Although “[n]o length requirement exists for a disclosure to adequately describe an invention,” Falko-Gunter, 448 F.3d at 1365–1366, we are persuaded that a POSA would not, based on the totality of the above disclosures, reasonably understand that the inventors were in possession of the claimed HEK-293 recombinant L. polyphemus Factor C protein, in view of the state of the art as of December 10, 2013. In this regard, we note that adequate written description of a biological molecule, such as a HEK293 recombinant L. polyphemus Factor C protein, requires “more than a mere statement that it is part of the invention and reference to a potential method for isolating it”; instead, what is required is “‘a precise definition, such as by structure, formula, chemical name, or physical properties,’ not a mere wish or plan for obtaining the claimed chemical invention.” The Regents of the” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Neither do we see Petitioner’s arguments regarding the December 10, 2013 priority date to be “mutually opposed” as Dr. Schaefer testified. Ex. 1067, 216:4– 24. Instead, we credit evidence of record, including Dr. Jain’s testimony and the February 22, 2018 Mizumura Declaration, that existence of the full sequence would permit a more complete analysis and that such an analysis would provide a POSA with a reasonable expectation that the claimed L. polyphemus recombinant protein would have a residual activity within the claimed range. See, e.g., Ex. 1029, 2–5; Ex. 1010, 48; Ex. 1065, 117:14– 130:24 (explaining that comparison of partial sequences in the Tokunaga 1991 publication showed “difference around the cleavage site” between T. tridentatus and L. polyphemus but comparison of the full sequence revealed that “the catalytic triad of histidine, serine, aspartate . . . to be more similar between Tachypleus and Limulus”). Patent Owner asserts that “Petitioner’s reliance on a statement made by Dr. Mizumura in a declaration submitted during prosecution of the ’767 Application fails to fill the gap in the analysis” regarding reasonable expectation of success, because the declaration “offers no evidence of the percentage of conserved amino acid substitutions that exist to support the conclusion that a POSA would have expected residual activity to be maintained between Tachypleus tridentatus and Limulus polyphemus” PO Resp. 47. However, as noted above, Dr. Mizumura provides an alignment of Factor C proteins from the two different species of horseshoe crab, determines that the similarity between the amino acid sequence is 99.5%, states that the amino acid residues that can undergo N-type sugar chain that L. polyphemus, like T. tridentatus, would also be less susceptible to inhibition by ions. Ex. 1029, 4–5. For the reasons discussed above, we also disagree with Patent Owner’s assertion that Petitioner’s reasonable expectation of success argument is “nothing more than conclusory assertions with no support.” PO Resp. 46. Rather, we find Petitioner has shown, by a preponderance of the evidence, that a POSA would have had reason to combine the teachings of Mizumura and the ’498 PCT, with a reasonable expectation of success in arriving at the Factor C protein recited in claim 21.” slip op. at 38
Patent outcomesUS 11,236,318 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,236,318 - Amazon.Com, Inc. / Amazon.Com Services LLC et al. v. Soundclear Technologies LLCAll claims unpatentablePTAB · Sep 3, 2026 · IPR2025-00673 · APJ Michael R Zecher · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over the combined teachings of the asserted references, including Shin and Aoyama and Shimomura and Iwase.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“1 SoundClear also filed a Contingent Motion to Amend that proposed to replace originally challenged claim 5 of the ’675 patent with proposed substitute claim 8. Paper 21. We, however, granted SoundClear’s request to withdraw its Contingent Motion to Amend and, as a result, the Contingent Motion to Amend will no longer be considered in this proceeding. Paper 30.” slip op. at 2
- Skill levelOther
“2. Level of Skill in the Art In determining whether an invention would have been obvious, we” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“combination because (1) configuring Shin’s processor 120 accordingly “would have been trivial, involving straightforward changes to enhance the processor’s approach to simplifying and abbreviating its output”; and (2) this approach was well-known as evidenced by Ha’s disclosure of replacing “team meeting” and “date” with “schedules” based on the user’s environment.6 Id. at 27–28 (first quoting Ex. 1011 ¶ 97, then quoting Ex. 1011 ¶ 98) (citing Ex. 1002 ¶ 102; Ex. 1011, Fig. 7).” slip op. at 33
- Expert testimonyPetitioner expert creditedDecided for petitioner
“4. Dr. Stern’s Testimony is Reliable In its Patent Owner Response, SoundClear contends that “Dr. Stern’s” slip op. at 125
Patent outcomesUS 11,244,675 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,244,675 - Intel Corporation v. Advanced Cluster Systems, Inc.All claims unpatentablePTAB · Sep 1, 2026 · IPR2025-00914 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Menon, Trefethen, RS6000, and POEref.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and We adopt the Petition’s formulation of the level of ordinary skill in the art, which is consistent with the ’679 patent, the prior art of record, and the testimony of both experts.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition relies on the ordinary and customary meaning of the claim terms consistent with the Phillips standard. Pet. 12–13 (citing 37 C.F.R. § 42.100(b)). The Petition also addresses the construction of “peer-to-peer architecture” recited in independent claim 1 of the ’679 patent, a limitation we need not construe to resolve the parties’ dispute in this proceeding. Id. at 13; see, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Owner relies on the ordinary and customary meaning of the claim terms consistent with the Phillips standard without further analysis. Resp. 7.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“RS6000 with Menon, namely because RS6000 provides an overview of the IBM SP2 multiprocessor and Menon teaches the use of “IBM SP2, a modern high performance distributed memory multiprocessor” used in the MultiMATLAB system. Id. at 24–25 (citing Ex. 1003 ¶¶ 142–145; Ex. 1005, 5–6, 14; Ex. 1007, 1, 11). The Petition also explains why POEref pertains to the field of cluster computing in a parallel operating environment. Id. at 26 (citing Ex.1008, 11 (“PE Software is designed to run on an … RS/6000 network cluster”)); (further citing Ex. 1001, 1:14–15; Ex. 1003 ¶¶ 146–149). The Petition contends that a POSITA would have been motivated to combine the teachings of POEref with Menon “because Menon suggests the combination by teaching that MultiMATLAB uses ‘POE, IBM's Parallel Operating Environment.’” Id. at 26–27 (citing Ex. 1005, 6); (further citing Ex. 1003 ¶¶ 150–153; Ex. 1005, 14; Ex. 1008, 11, 46). We agree with Petitioner’s analysis. We find the Petition’s argument and evidence of a motivation to combine the asserted prior art references in the manner claimed to be compelling, persuasive, consistent with the disclosures in the references, which include internal cross-references to each other, and supported by the expert testimony of Dr. Bajaj.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Patent Owner argues that Menon teaches away from a combination with Trefethen because “Menon expressly states that Trefethen’s first-generation architecture is inadequate for the objectives that motivated the newer design.” Resp. 35–37. The evidence does not support Patent Owner’s position. First, Patent Owner’s teaching away argument is inconsistent with the strong evidence of a motivation to combine Menon and Trefethen discussed above. Second, Patent Owner’s teaching away argument is contrary to the evidence of record for the reasons given in Petitioner’s Reply. Reply 13–15 (e.g., “Menon explicitly cites Trefethen and explains that Menon builds on the teachings of Trefethen.”) (citing Pet. 22; Ex. 1003 ¶ 70; Ex. 1005, 1–3; Ex. 1163 ¶¶ 47–53). We are further persuaded by Dr. Bajaj’s reply testimony: the “MultiMATLAB teachings in Trefethen. In fact, Menon describes enhancing the system of Trefethen. For example, Menon describes a list of “goals” already achieved by MultiMATLAB and then states that the architecture has been “redesigned to achieve two further goals.” One of these two “further goals” is “extensibility,” which Menon achieves by its description of adding “MEX routines” to the system of Trefethen. Far from showing an “incompatibility” between Menon and Trefethen as the POR argues, Menon’s addition of the “MEX routines” to MultiMATLAB shows that such a modification was within the capabilities of a POSITA, because the authors of the Menon paper actually implemented the modification. Ex. 1163 ¶ 49 (citing Ex. 1005, 1–3). Dr. Bajaj’s testimony is unrebutted, credible, and supported by the record. We agree with Dr. Bajaj’s reasoning, which is based on direct quotes in Menon. We further agree with Dr. Bajaj’s conclusion that Menon does not teach away from the combination with Trefethen. Id. ¶¶ 50–52. Menon’s description of building on and enhancing the teachings of Trefethen—the earlier work of the same research group at Cornell—by adding MEX routines to achieve high-performance parallel computing and extensibility for MATLAB, demonstrates a classic motivation for a POSITA to combine the teachings of Menon and Trefethen. RS6000 and POEref are specifically referenced in Menon-Trefethen and add operational details of the parallel operating platform that teach a POSITA how to implement the MultiMATLAB system with a reasonable expectation of success. Such facts are inconsistent with Patent Owner’s teaching away and lack of motivation arguments.” slip op. at 24
Patent outcomesUS 12,021,679 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 12,021,679 - Google LLC v. Wildseed Mobile, LLCNo claims unpatentablePTAB · Sep 1, 2026 · IPR2023-00247 · APJ Michael T Cygan · IPR · Remand
Claim 15 was not shown unpatentable over Rothschild alone or Rothschild and Chen because Petitioner did not sufficiently explain or support how the IM modality generates the claimed hot link.
RulingsRemand decision- BurdenNot shown unpatentable
“disclaim HTML-formatted advertisements in IM,” and that there is no evidence or expert testimony that IM messages are incompatible with HTML tags. Pet. Remand Reply 4–7 (also stating, “nor did Patent Owner contest the Petition’s showing with respect to the IM limitation of claim 15”). However, in inter partes review, the burden is on Petitioner to explain and support its assertions; it is not on Patent Owner to prove that its claims are not unpatentable. In re Magnum Oil Tools, 829 F.3d at 1375; PO Remand Resp. 5. Petitioner must explain how Rothschild teaches generating a hot link message, in an instant message communication, that includes the determined action and instructions for rendering and displaying the hot link. Petitioner’s reliance on a list of communication types is insufficient because although personal communications are sent “with” an advertisement, not all members of that list (e.g., SMS) generate a hot link message having the claimed instructions in the manner (formatting) asserted by Petitioner. Ex. 1005, 8:3–6; Ex. 2009 ¶ 64.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“link message by IM is that Rothschild states that “a personal communication can include, but is not limited to, an e-mail message, text message, short message service (SMS) message, chat-room message, instant messaging message, video message, voice message, and any other personalized network communications.” Pet. 40 (quoting Ex. 1005, 8:6–11); Pet. Remand Reply 2, 5–6 (arguing that this is unrebutted by Patent Owner). Such an explanation would be sufficient if each of those communications were shown to work in the same manner as email, such that no further explanation would be required to show that one having ordinary skill in the art would understand how Petitioner’s email and HTML tag explanations applied to each of the other message types. formatting step, which is required under Petitioner’s assertions for limitation [10.7]. Ex. 2009 ¶¶57 (citing Ex. 1005, Fig. 10), 60 (citing Ex. 1005, Fig. 11), 64 (“[t]here is no formatting step for the SMS message, only for e-mail.”), 76 (“SMS messages . . . do not use HTML”); PO Sur-reply 27. Nor does Petitioner assert or explain that IM messages are formatted so as to teach the generating step of limitation [1.4]/[10.7]. Pet. 32 (“Rothschild’s server generates a hot link message when the web server formats the message data into an e-mail that contains the selected interactive advertisement.”). Because Petitioner’s “generating a hot link” assertions rely on the use of HTML (in email), and one of Rothschild’s listed communication types (SMS) does not use HTML, Petitioner fails to show persuasively that an artisan of ordinary skill would have interpreted each of Rothschild’s other listed types of personal communication as using HTML to generate a hot link in the claimed manner.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Although Dr. Houh testifies that the use of IM would have been obvious, this testimony is a verbatim copy of what the Petition says on claim 5. Compare Ex. 1003 ¶¶ 80–81, 130–31 with Pet. 41. Dr. Houh cites to Rothschild’s list of communication types, but provides no analysis or reasoning or further evidence for his obviousness conclusion in the Houh Declaration. As such, it is a bare conclusory statement entitled to little or no weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinions is based is entitled to little or no weight.”). We further note that although Dr. Houh relies upon Rothschild’s “interactive advertisement that is displayed with a graphic and includes an embedded URL,” Dr. Houh does not explain how each of the listed communication types (which include a voice message), or IM specifically, have these properties. Ex. 1003 ¶ 58.” slip op. at 11
Patent outcomesUS 10,869,169 not shown unpatentable§ 103 obviousnessPatents in suitUS 10,869,169 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Sep 1, 2026 · IPR2023-00220 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–5, 7–13, and 16 are unpatentable as obvious over the asserted prior art; a separate ground was not reached because those claims were shown obvious on other grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic displays, including the thermal management, product design issues, and failure modes associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes associated with electronic displays. Dec. 7–8. The parties’ positions have not changed from those we considered in the Institution Decision, and neither party argues that the outcome of this case would differ based on our adoption of a particular level of ordinary skill in the art. Thus, we apply the same definition in this Decision. Our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s proposed definitions, however, and we note that our conclusion would be the same under either definition.” slip op. at 8
- ExcludeMotion to exclude, deniedDenied
“new evidence filed by Patent Owner with its Sur-reply in contravention of 37 C.F.R. § 42.23(b). Paper 47, 1–5. We do not rely on either of these exhibits in rendering this Decision. Accordingly, we dismiss as moot Petitioner’s Motion to Strike.” slip op. at 73
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that Patent Owner fails to adduce evidence showing how the claimed invention satisfied the alleged need for effective outdoor cooling. See Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988) (holding that a proponent of objective evidence of long-felt need must show that “the claimed invention satisfied a long felt need”). Patent Owner states in conclusory fashion that “[d]espite the demand for outdoor displays, no one (including Samsung, despite having attempted to develop outdoor displays at least by 2005) was successful until Mr. Dunn conceived of his invention.” PO Resp. 75. Patent Owner cites no evidence for this proposition, so Patent Owner’s assertions regarding Mr. Dunn’s invention satisfying the alleged need are based on unsupported attorney argument. Accordingly, “we conclude that the nexus between the claimed invention and the purported long-felt, unmet need is too attenuated to provide a persuasive rationale for nonobviousness.” In re Karpf, 758 F. App’x 960, 965 (Fed. Cir. 2019).” slip op. at 64
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“objective indicia of nonobviousness (i.e., secondary considerations) may lead to a conclusion that the challenged claims would not have been obvious. See, e.g., Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983) (instructing that evidence of secondary considerations, when present, must always be considered in determining obviousness). Objective evidence of nonobviousness may include evidence of commercial success, licensing, copying, praise by others, long felt but unresolved need, and” slip op. at 58
Patent outcomesUS 9,173,322 unpatentable§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,173,322 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2025-00260 · APJ Kevin W Cherry · IPR · Final written decision
The Board held all challenged original claims unpatentable as obvious and denied the contingent motion to amend substitute claims 30–49.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Motion to Amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 for claims 30 and 32–49. We further find that Patent Owner has not met the statutory and regulatory requirements for proposed claim 31. Accordingly, we address below whether any of the proposed substitute claims have been shown to be unpatentable.” slip op. at 86
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDenied
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,604,678 - Savant Technologies LLC D/B/A GE Lighting / Ledvance LLC et al. v. Feit Electric Company, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2024-01357 · APJ Kevin W Cherry · IPR · Final written decision
The Board held challenged claims 1–3, 6, 7, 9–14, 16–21, 25, 26, and 29 unpatentable as obvious, and granted the motion to amend for substitute claims 30–49.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016); see KSR, 550 U.S. at 418. Further, an assertion of obviousness “cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418; In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016) (a finding of a motivation to combine “must be supported by a ‘reasoned explanation’”).” slip op. at 10
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusObjective indicia outweighedDecided for petitioner
“7. Summary As discussed above, we find that Patent Owner has failed to show a” slip op. at 35
- Expert testimonyPetitioner expert creditedDecided for petitioner
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted in part
“5. Conclusion For the reasons set forth above, we determine that Patent Owner’s Motion to Amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121 for claims 30 and 32–49. We further find that Patent Owner has not met the statutory and regulatory requirements for proposed claim 31. Accordingly, we address below whether any of the proposed substitute claims have been shown to be unpatentable.” slip op. at 86
Patent outcomesUS 8,604,678 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,604,678 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00254 · APJ Jameson Lee · IPR · Final written decision
Claims 1–3, 5–9, 11–13, 15–18, and 20 are unpatentable as obvious over Karppanen and over Yare.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Accordingly, we do not discount Mr. Smith-Gillespie’s testimony” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim. Petitioner asserts that in the Delaware action , the district court construed “closed loop” as “gas pathway within a display housing containing gas that is essentially isolated from external air.” Pet. 11 (citing Ex. 1026, 1). Petitioner asserts that the district court’s construction is the proper construction, in light of the specification and the prosecution history of the ’740 patent. Id. at 11–12. Petitioner explains: The ’740 patent refers to the gas/air, circulating through a closed loop as the circulating gas/air and also as the “isolated gas.” (Ex. 1001, 9:64–10:3, 10:7–9, 10:56–58, 11:30–12:6 (claims reciting circulating gas/air), 3:30–[39], 3:50–52 (specification referring to gas in the closed loop as “circulating gas” and “isolated gas”), FIG. 1.) Moreover, as noted above, the Applicant distinguished the claims from the Thielemans prior art based on the argument that the closed loop must be separate from and in addition to the open loop. (Ex. [1031], pp. 44-45, 160 (Responses filed on 01/07/2019 and 08/15/2019).) The Court’s “closed loop” construction should apply here, though Applicant notes that this claim construction does not affect the applicability of the prior art in this Petition because the art teaches the separate loops. Id. at 12. Petitioner’s characterization of the prosecution history with respect to the Thielemans reference is inaccurate. Our review of the cited portions of the prosecution history reveals that the Applicants did not argue to the Examiner that the closed loop and the open loop must be isolated from each other and cannot mix. Rather, the Applicants argued that Thielemans discloses having an open loop or a closed loop, not both an open loop and a closed loop. Ex. 1031, 44–45, 160. The Applicants also argued that Thielemans’s closed loop is not “about” and is not “encircling” the electronic image assembly. Id. at 160. The cited prosecution history does not support Petitioner’s assertion. Patent Owner explains that the ITC in the related investigation” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Kahn, 441 F.3d at 988.” slip op. at 34
Patent outcomesUS 10,506,740 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,506,740 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Manufacturing Resources International, Inc.All claims unpatentablePTAB · Aug 31, 2026 · IPR2023-00221 · APJ Jameson Lee · IPR · Final written decision
Claims 1–15 are unpatentable as obvious over Karppanen and Larson; the Board found the evidence of obviousness outweighed the evidence of nonobviousness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“art. This determination of the level of ordinary skill in the art is consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Further, our obviousness conclusions would be no different even if Patent Owner’s articulation of the level of ordinary skill in the art is adopted. B.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “closed loop” The term “closed loop” is recited in each independent claim.” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“for outdoor displays, no one (including Samsung, despite having begun attempting to develop outdoor displays at least by 2005) was successful until Mr. Dunn and Mr. Hubbard conceived of their invention.” PO Resp. 65. Patent Owner cites no evidence for this proposition. Thus, Patent Owner’s assertions regarding Mr. Dunn’s and Mr. Hubbard’s invention satisfying the alleged need are based on unsupported attorney argument. Accordingly, “we conclude that the nexus between the claimed invention and the purported long-felt, unmet need is too attenuated to provide a persuasive rationale for nonobviousness.” In re Karpf, 758 F. App’x 960, 965 (Fed. Cir. 2019).” slip op. at 62
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableObjective indicia outweighedUnpatentable
“and against obviousness, and weighed the evidence accordingly. The evidence of obviousness outweighs the evidence of nonobviousness. Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Karppanen and Larson.” slip op. at 74
Patent outcomesUS 11,013,142 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,013,142
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.