- Samsung Electronics Co., Ltd. v. Sionyx, LLCInstitution deniedPTAB · Jun 6, 2025 · IPR2025-00065 · APJ Brian D Range · IPR · Institution
The Board denied institution of IPR challenging claims 1–44 under § 314(a), finding the Fintiv factors favoring denial outweighed the Petition’s strong merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“stipulation would only eliminate the District Court’s consideration of Haddad204. Despite the stipulation, the District Court would still have to consider invalidity of every claim the Petition addresses and would still have to consider the Alie, Baggenstoss, and Park references. Cf. Stellar at 4 (“Petitioner’s invalidity arguments in the district court are more expansive and include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot.”). In other words, “Petitioner’s stipulation does not ensure that [this proceeding] would be a ‘true alternative’ to the district court proceeding.” Id. at 3–4. Because of the remaining overlap between the Petition and the District Court proceeding, Fintiv factor four weighs strongly in favor of discretionary denial.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“for back side illumination (BSI), which appears to teach or suggest a textured region with surface features “located on the light incident side of the semiconductor layer and configured to interact with incident [EMR].” Pet. 22–27 (citing Ex. 1006, Fig. 5, ¶¶ 53, 68, 96; Ex. 1004 ¶¶ 39–40, 88–95, 101–107). As Petitioner and its expert explain, a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device because BSI devices allow more incident light to reach the semiconductor layer, resulting in more light being absorbed, an increase in the quantum efficiency, and an improvement in the signal to noise ratio. Pet. 25–26 (citing Ex. 1006 ¶¶ 68, 70; Ex. 1004 ¶¶ 39–40, 92, 95). Patent Owner argues that Alie does teach, suggest, or disclose “a textured region comprising a plurality of shallow trench isolation features.” Prelim. Resp. 9–11. But it appears Petitioner has at least shown Alie teaches or suggests this element. See discussion supra. Patent Owner further argues that Petitioner fails to present any proof that a person of ordinary skill in the art would have been motivated to modify Figure 5 of Alie into a BSI device. Id. at 11–15. But, in our view, Petitioner has provided an adequate motivation to modify Alie—so that more light will be absorbed, yielding an increase in the quantum efficiency and an improvement in the signal to noise” slip op. at 18
- Parallel petitionsNot reached
“17 Petitioner filed petitions for IPR2025-00064 and IPR2025-00065 at the same time. Both petitions address the ’682 patent but apply different art. Patent Owner also argues the second petition (IPR2025-00065) should be denied because one petition is sufficient. Patent Owner’s Response to Petitioner’s Notice Ranking Parallel Petitions, Paper 11. Because we deny institution based on Fintiv discretion, it is not necessary to reach Patent Owner’s multiple petition argument.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,347,682 - PTAB · Jun 5, 2025 · IPR2025-00083 · APJ Barbara A Parvis · IPR · Institution
Instituted IPR on all grounds for claims 1–9; the Board found a reasonable likelihood that claims 1–9 are obvious over Takeda and Yan.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Contrary to Patent Owner’s arguments, the Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“early stage, we find that Petitioner has shown sufficiently, for purposes of institution, that the combination of Takeda and Yan teaches or suggests all recitations in claim 1. Also, we find that Petitioner provides sufficient rationale to combine the teachings of Takeda and Yan for purposes of institution. We find that Patent Owner’s arguments do not undermine Petitioner’s evidence. Based on the record at this preliminary stage, we determine that Petitioner demonstrates a reasonable likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 as obvious over the combination of Takeda and Yan.” slip op. at 27
- Skill levelSkill level petitioner adoptedOther
“had “a bachelor’s degree in electrical engineering, computer engineering, or a related discipline, knowledge of the relevant 3GPP standards” and “at least 2 years of experience working in a field involving wireless communications.” Pet. 10 (citing Ex. 1002 ¶¶ 38–40). Petitioner asserts a “person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. Petitioner also asserts a “person with less than 2 years of experience working in a field involving wireless communications could still qualify if the person has additional education that compensate[s] for their lesser experience.” Id. Patent Owner does not dispute Petitioner’s level of skill at this preliminary juncture. See generally Prelim. Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this early stage, neither party provides an express construction for any claim term and no express construction is necessary to resolve the conflict at this stage of the proceeding. “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We, therefore, do not provide an express construction for any term at this preliminary stage in the proceeding. D. Asserted Obviousness of Claims 1–9 over Takeda and Yan” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,638,463 - Rocket Media, LLC D/B/A Launch Labs v. Fullthrottle Technologies, LLCInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00149 · APJ Arthur M Peslak · IPR · Institution
The Board denied institution on claims 1–36 because Petitioner did not show a reasonable likelihood that either asserted obviousness combination rendered them unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion – Claim 1 For the foregoing reasons, Petitioner does not establish a reasonable likelihood that claim 1 would have been obvious over Doughty, van Boucq, and Smith.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“column 3, lines 40–45 and column 4, lines 32–43. Pet. 34. At column 3, Smith discusses in general terms that a roadside billboard “may be viewed as effective (or at least more effective) where analytics data indicates a large number [of] user[] visits to a website advertised by the billboard, and the users are in close proximity to the billboard at or near the time of initiating the website visit.” Ex. 1032, 3:40–45. Likewise, at column 4, Smith further discloses using analytics data to assess the effectiveness of a promotion at a geographic location. Id. at 4:32–43. The cited portions of Smith, thus, disclose processing data from a large number of users to judge the effectiveness of the overall campaign. Petitioner does not direct us to any disclosure in Smith that the effectiveness processing module uses a specific action taken by a specific user, as taught by the ’219 patent, in determining that a particular browser session was initiated by a user with an intent to visit the URL.” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“is my opinion that Smith discloses determining whether the user initiated a browser session with an intent to visit the website based upon how close the user’s location is to an ad,” and “[i]n my opinion a [person of ordinary skill in the art] would have understood that Smith discloses determining that a URL, such as a URL on the billboard.” Ex. 1007 ¶ 265. Mr. Williams’s opinion testimony that Smith discloses “determining” the intent of a specific user is conclusory because it is not supported by the cited disclosure of Smith or any other evidence. See id. His testimony on this point is, thus, entitled to little, if any, weight. Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9, 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts a person having ordinary skill in the art on the priority date of the ’219 patent: would have been an individual with either (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent field plus at least one year of experience working on computer networking, or (2) at least 3 without a formal degree. Pet. 13. Patent Owner does not contest Petitioner’s definition. See Prelim. Resp. 21. For the purposes of this Decision, we apply Petitioner’s uncontested” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,823,219 - DBR Finance, Inc. v. Rugged Cross Hunting Blinds, LLCNo claims unpatentablePTAB · May 29, 2025 · IPR2024-00291 · APJ Cynthia L Murphy · IPR · Final written decision
The Board held claims 1–19 not unpatentable because Petitioner did not prove the proposed Whybrew–Strength combinations disclosed the claimed mesh panels with spaced holes.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We question, therefore, whether someone having an education in textile engineering or physics, but no experience in the field of hunting blinds, would be consistent with the level of skill portrayed by the ’535 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that Petitioner’s expert’s experience, education, and qualifications are rooted in textiles, fibers and physics, and sophisticated subjects related thereto. See Ex. 1007 ¶¶ 14–20. But his deposition revealed that he has little or no experience in the field of hunting blinds. See Ex. 2038, 8–14.5 5 The same might be said of Patent Owner’s expert. See Ex. 2031, ¶¶ 6–7; Ex. 1023, 16. However, our obviousness analysis leaned lightly, if at all, on her declarations and testimony.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Mesh Material In the Petition, Petitioner asks that “the term ‘mesh material’” be interpreted in accordance with “a plain and ordinary usage.” Pet. 25. Per Petitioner, the “plain and ordinary” meaning of the term “mesh material” is “a woven material of open texture with spaced holes therein.” Id. Per Petitioner, “[o]ther typical terms used to describe a mesh-like material” are “a screen material, or a netting material, which are believed to be synonyms.” Id. Patent Owner does not dispute that a mesh material would have an open texture with spaced holes therein. See PO Resp. 18. We find that Petitioner’s proposed construction aligns with the ’535 Patent’s specification. See Ex. 1001. The drawings in the ’535 Patent depict the mesh material 26 as having an array of uniformly spaced circular holes forming a net-like structure (see id., Fig. 1A, 1B, 4, 9) or an array of uniformly spaced rectangular openings (see id. Fig. 8) forming a screen-like structure. The embodiments of the mesh material 26 listed in the ’535 Patent (e.g., a mesh banner material, scrims, a network of fibers, etc.) are materials having net-like or screen-like structures. See id. at 6:47–7:28.6” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our construction aligns with the claim language; Petitioner’s proposed construction does not. See Ex. 1001, 10:4–19. The independent challenged claims set forth “one or more panels of mesh material” and then set forth “said one or more panels comprising: a first side with a camouflage pattern; and a second side with a dark color coating.” Id. at 10:4–11. The recited “said one or more panels” corresponds to the previously recited “one or more panels of mesh material,” not panels comprising a material that was only a “mesh” prior to printing/coating. See id. Also, the independent challenged claims set forth that “the one or more panels of the mesh material define an outer surface of the camouflage structure.” See id. at 10:18–19, 1:23–24 (emphasis added). And the panel(s) defining a hunting blind’s outer surface would include the dark color coating. Our construction aligns with the ’535 Patent’s specification; Petitioner’s proposed construction does not. See Ex. 1001. The ’535 Patent repeatedly describes the relevant panel material in the hunting blind (i.e., post printing/coating) as a mesh material. See id., Abst., 1:19–5:34, 6:47–7:28, 9:16–54, Figs. 1A, 1B, 9. The ’535 Patent expressly describes and depicts the mesh material 26 as including the camouflage pattern and the dark-color coating. See id. at 1:52–56, 3:24–25, 3:31–33, Figs. 1A, 1B. The ’535 Patent says that “panels” of this coated mesh material 26 “are used to form” a hunting blind. Id. at 3:22–26. The ’535 Patent says that “[m]esh material is presented for a hunting blind with a camouflage pattern printed on a first side and a second side with a color coating.” Id. at Abst. The ’535 Patent says that “mesh material of interwoven fabric is provided for a hunting blind including a camouflage pattern printed on a first side and a second side with a dark color coating.” Id. at 1:19–22; see also id. at 1:44–49. Our construction aligns with the ’535 Patent’s prosecution history; Petitioner’s proposed construction does not. See Ex. 1006. As mentioned above, throughout prosecution of the ’535 Patent, the same prior art material was mapped to the claimed panel(s) of mesh material. See Ex. 1006, 64–72, 122–106. The mapped-to prior art mesh material was described during prosecution as an “interwoven fabric” with “a pattern” printed on a first side and “a dark color coating” on a second side. Ex. 1006, 64; see also id. at 122. And the mapped-to prior art mesh material (i.e., which included not only the interwoven fabric but also the printed pattern and the dark color coating) had a “net-like structure” with an array of uniformly spaced “net holes” that are “not closed.” Ex. 2021, 4:1–5, see also id. at 2:58–3:6, 4:34–45, Figs. 1, 2a. Thus, we understand that claimed panel(s) of mesh material must have” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“However, Patent Owner does not bear the burden of proving Strength’s camouflage material 10 does not have holes. Rather, Petitioner bears the burden of proving that Strength’s camouflage material 10 does have holes. And Petitioner’s arguments that undermine Patent Owner’s position that Strength’s camouflage material 10 does not have holes, concurrently undermine Petitioner’s position that Strength’s camouflage material 10 does have holes. Per Petitioner, “Strength is silent on whether visible holes exist in the fabric” (Pet. Reply 8) and “the Strength reference doesn’t discuss anything about holes” (Tr. 14). Petitioner’s expert testified that it was his “understanding that Strength is silent” on “whether or not there are holes.” Ex. 2038, 44. Petitioner contends that Strength’s silence about the presence/ absence of holes hinders Patent Owner from proving that Strength’s camouflage material 10 does not have holes. See Pet. Reply 8. We agree. But this same silence likewise hinders Petitioner from proving that Strength’s camouflage material 10 does have holes.” slip op. at 35
Patent outcomesUS 11,399,535 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,399,535 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 28, 2025 · IPR2024-00255 · APJ Annette R Reimers · IPR · Final written decision
Claims 2, 4, and 6–10 are unpatentable as obvious over Bhattacharya and Zeng, and over Bhattacharya, Zeng, and Spain; claims 1, 3, and 11 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Second, the key differences between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill in the art at the time of the invention is that Patent Owner asserts “experience in wireless telecommunications and cellular technology is necessary,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 22–23 (citing Ex. 2018 ¶ 46); see also id. 44– 45. The ’104 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:13–20; PO Resp. 44. Bhattacharya is 9 Patent Owner refers to IPR2024-01209, but the correct citation is IPR2023- 01209. See PO Resp. 22. 1005, code (57), ¶¶ 1, 13; PO Resp. 44. Zeng is directed to handoff from one cell to another in a wireless cellular communication system to achieve continuous service. Ex. 1006, 1; PO Resp. 44. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1007, code (54), ¶¶ 1, 11; PO Resp. 44. We find that there is support in the ’104 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill in the art would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill in the art.” slip op. at 8
- Expert testimonyPetitioner expert creditedMixed
“In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’104 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 7; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 14
- BurdenUnpatentable
“Based on the evidence presented, Petitioner adequately establishes by a preponderance of the evidence that a person having ordinary skill in the art would have had reason to reach the Bhattacharya-Zeng combination with a reasonable expectation of success.” slip op. at 44
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’104 patent. Namely, the ’104 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”18 Ex. 1001, 3:50–60. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:56–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’104 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 3 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 27
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,561,104 - PTAB · May 23, 2025 · IPR2025-00196 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–16 under both § 103 grounds, finding a reasonable likelihood that at least one claim would have been obvious over Best-2008 and Osada.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Under our current guidance, the filing of a Sotera-type stipulation is not conclusive, but remains “highly relevant” and will be considered “as part of [our] holistic analysis” here. See Guidance Memo. Whether Petitioner has other bases for invalidating the ’457 patent, such as the CarnoJet prior art product identified in the district court, is not a consideration here if such bases could not be asserted in this proceeding (and are not being used to argue over the asserted prior art here as a loop hole from the stipulation, of which there is no evidence).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“satisfied that Petitioner has met its burden for institution. No argument by Patent Owner persuades us otherwise. Petitioner has shown that each limitation and element of claim 1 is taught or suggested by the combination of Best-2008 and Osada. Moreover, Petitioner’s asserted reason to combine the references is supported by the references’ disclosures: Best-2008 suggests filtration of its coolant is desirable, but provides no specific means for doing so; Osada teaches a way of filtering fluid from an open-top tank, similar to Best-2008’s.” slip op. at 42
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA[12]in the field of the ’457 patent at the time of the earliest possible effective filing date (December 14, 2012) would have had Bachelor of Science degree in mechanical or chemical engineering and at least two years of experience relating to the design and/or implementation of fluid circulation systems involving application of fluid dynamics and heat transfer principles. Additional education may serve as a substitute for a lack of experience and vice versa. (Ex-1003- Dahm at ¶¶36-41, 63-70.) Pet. 18–19. Patent Owner applies this same definition. Prelim. Resp. 6–7. At this stage of the proceeding, we accept and use Petitioner’s proposed and unopposed definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ‘457 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although either of the district court proceedings’ definitions of the term “weir” appears to accurately describe the feature, at this stage of the proceeding, we do not find it necessary to expressly interpret this claim language.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,405,457 - Cooler Master Co., Ltd. v. Asetek Danmark A/SInstitution deniedPTAB · May 8, 2025 · IPR2024-01497 · APJ Kevin W Cherry · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7 would have been obvious over Duan and Duan-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness.3 Graham v. John Deere Co., 383 U.S. 1, 17– 18 (1966). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. The ’681 patent claims benefit of a May 6, 2005, filing date, which is before the effective date of the applicable AIA amendments. Ex. 1001, Code [63]. 3 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Abraham, Petitioner contends that an ordinarily skilled artisan for the ’681 patent “would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as an B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely-related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems, or in similar systems.” Pet. 17. Petitioner additionally contends a “person with less education but more relevant practical experience, depending on the nature of that experience and degree of exposure to liquid cooling systems for computer systems, could also qualify as a POSITA in the field of the ’681 patent.” Id. (citing Ex. 1005 ¶ 42). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’681 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any specific terms require construction and applies the plain meaning of all claim terms herein.” Pet. 18. Patent Owner does not address claim construction. See generally Prelim. Resp. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“motivated to combine Duan and Duan-I in this manner, Petitioner argues that “given the known ‘compact trend of computer[s]’ recognized by Duan [], a POSITA would have been motivated to rotate Duan’s liquid driving module 2 (pump) counterclockwise by 90 degrees in Figure 7 to reduce the systems overall height in view of Duan-I.” Pet. 26 (citing Ex. 1007 ¶ 6; Ex. 1005 ¶ 57). Petitioner asserts that “[a]lthough modifying Duan in this fashion would require some minor reconstruction, doing so would reasonably be expected to result in success.” Id. Petitioner contends that “[t]he modification is well within a POSITA’s technical grasp, and would have predictably resulted in a modified system like the one [reproduced] below (double-sided chassis outlined in red).” Id. at 26–27. Petitioner provides the following graphical explanation, reproduced below, of how it arrives at this modified figure.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,733,681 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00031 · APJ Annette R Reimers · IPR · Final written decision
Claims 16–20, 24, 26, and 27 are unpatentable: claims 16, 19, 20, 24, and 27 are anticipated by Bhattacharya, and all challenged claims are obvious over Bhattacharya and Spain.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner for the following reasons. First, Patent Owner’s definition is consistent with our determination in IPR2023-01210, which involved the same ’358 patent, and Petitioner does not explain sufficiently why we should adopt a different definition. See generally Pet. Reply.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 42–44. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 4 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the entire trial record, we agree with Petitioner’s analysis with supporting evidence and credit Dr. Sundaresan’s testimony supporting Petitioner’s position. See Pet. 20–37. Thus, we determine that Bhattacharya discloses the recitations of claim 15. b. Remaining Claims 16, 19, 20, 24, and 27 Claims 16, 19, 20, 24, and 27 depend from claim 15. Ex. 1001, 13:19–21, 12:30–36, 12:52–55; 12:63–67. Petitioner accounts for the limitations recited in each of claims 16, 19, 20, 24, and 27. Pet. 37–42. Patent Owner does not offer any arguments specifically addressing the limitations of claims 16, 19, 20, 24, and 27. See PO Resp. passim. Petitioner shows, by a preponderance of the evidence, that each element of claims 16, 19, 20, 24, and 27 is disclosed by Bhattacharya.” slip op. at 41
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,400,358 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 7, 9, 32, 38, and 40 are unpatentable as obvious over Bhattacharya and Yost.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“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) (citation omitted). The key difference between Petitioner’s and Patent Owner’s proposed qualifications for a person of ordinary skill at the time of the invention is that Patent Owner asserts that experience in “wireless networks, cellular radio systems, mobile communication devices and radio navigation systems,” as well as a background in radio frequency communications and/or navigation system technology with two years of industry experience working in the same, would be required. PO Resp. 23. The ’753 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:15–23. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1004, code (57), ¶¶ 1, 13. Yost is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1008, code (57), 2:17–19. We find that there is support in the ’753 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner that Dr. Sundaresan’s declaration is substantively deficient and therefore should not be afforded weight. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 47–28. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’753 patent and the prior art analyzed in the Declaration. Ex. 1027 ¶ 14. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 15. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6–7.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s proposed additional requirements of determining the boundaries of the area from an evaluation of calibration data should not be imported into the construction of “grid point.” See Pet. Reply 1, 5. The construction of “grid point” we adopt is supported by the disclosures of the ’753 patent. Patent Owner’s support and arguments for its proposed construction rely, in large part, on specific example methods of generating non-unform grid points (NUGs). See PO Resp. 27–32. We agree with Petitioner, however, that the intrinsic record supports that the term “grid point” encompasses both uniform and non-uniform grid points. See Pet. 8–13. The ’753 patent Specification identifies “grid points” as “NUGs or UGs” and further indicates that a “NUG” is a type of a grid point. Ex. 1001, 25:31–34, 26:32–35, 13:7–8 (“a grid point, such as a NUG”). Accordingly, the claims and Specification disclose embodiments where grid points are not limited to non-uniform grid points, and they may be uniform grid points.9 Patent Owner’s proposed construction would impermissibly read out embodiments of the ’753 patent that use uniform grid points rather than non-uniform grid points.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“The evidence supports that Petitioner has sufficiently demonstrated that Bhattacharya and Yost teach limitation [1b]. Bhattacharya discloses that empirical measurement of signal strengths are used to generate “expected signal-strength functions E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t),” with a grid overlaid onto a geographic region where the center of each square represents a location. Ex. 1004 ¶¶ 106, 115–117; see also Pet. 35. Petitioner asserts, and we agree, that Bhattacharya discloses associating the expected signal-strength function with locations in a region, and that data is stored in the “Expected Signal-Strength Database.” Pet. 35–36 (citing Ex. 1004 ¶ 85). We also agree that this association of location (point) with calibration data (signal strength) is sufficient for the teaching of a “grid point,” which is disclosed by Bhattacharya. Pet. 35–36; Ex. 1004 ¶¶ 85, 105–117, 120, 123; Ex. 1003 ¶ 77; Pet. Reply 14–15; Ex. 1027 ¶¶ 44– 45. We also agree that Bhattacharya teaches the generation of “grid points” by, at least, populating the Expected Signal-Strength Database with locations and expected signal strength data, which includes interpolating the locations between sampled locations. Ex. 1004 ¶¶ 85, 119, 120, 123; Ex. 1003 ¶¶ 77– 78; Ex. 1027 ¶ 45; see also Pet. 35–36; Pet. Reply 15–16. Petitioner further asserts, and we agree, that Yost teaches collecting empirical measurements within the grid square surrounding the geographic point and averaging these measurements. Pet. 37 (citing Sections V.2–3; Ex. 1008, 7:28–44; Ex. 1003 ¶ 79). Further, because it is supported by the teachings of Bhattacharya and Yost, we credit Dr. Sundaresan’s testimony that a person of ordinary skill in the art would have found that Yost’s small areas of predetermined size are similar to the grids and grid points in Bhattacharya. Ex. 1003 ¶ 79; Ex. 1008, 7:50–51; Ex. 1004 ¶ 106, Fig. 6. Yost discloses that by averaging the empirical signal strengths the effects of fast fading can be removed (Ex. 1008, 7:50–56), so we also credit Dr. Sundaresan’s testimony in this regard on the advantages of averaging the multiple empirical measurements in a grid square (Ex. 1003 ¶ 80). Petitioner further asserts, and we agree, that a person of ordinary skill in the art would have found it obvious that expected signal-strength functions of {E(1,x,y,t), E(2,x,y,t), and E(3,x,y,t)} for a given grid point of Bhattacharya “may represent an average of calibration data from multiple locations within the grid square, and not simply represent the storage of the calibration data itself” in view of Yost because Petitioner’s assertion is supported by the evidence. Pet. 37–38 (citing Ex. 1008, 7:50–56; Ex. 1003 ¶ 80). Accordingly, we agree with Petitioner that the combination of Bhattacharya and Yost teaches that the average of the calibration data is “representative calibration data for an area.” See Pet. 37–38; Ex. 1003 ¶¶ 79–80; Pet. Reply 16; Ex. 1027 ¶ 46. Thus, we agree with Petitioner that the evidence of record supports that Bhattacharya and Yost teach generating sets of grid points for the calibration data, where the grid points are points associated with representative calibration data for an area.” slip op. at 40
Patent outcomesUS 8,406,753 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00032 · APJ Brian D Range · IPR · Final written decision
Claims 2–5, 9, 11, 12, 14–16, 18–22, 27, 29, 31, and 32 are unpatentable over the asserted anticipation and obviousness grounds; claims 1, 25, and 35 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The ’494 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:20–27; PO Resp. 45. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1005, code (57), ¶¶ 1, 13; PO Resp. 44–45. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1006, code (54), ¶¶ 1, 11; PO Resp. 45. We find that there is support in the ’494 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 9
- BurdenDecided for petitioner
“Patent Owner, however, has not identified any language in the Petition that explicitly incorporates by reference Dr. Sundaresan’s testimony. See generally PO Resp.; PO Sur-Reply. Nevertheless, to the extent that the Petition purportedly incorporates by reference Dr. Sundaresan’s testimony, we do not find such incorporation sufficiently extensive to merit disregarding the testimony. Typically, an incorporation by reference is deemed improper in instances in which large portions of a declaration are incorporated—particularly where the incorporation serves to circumvent a word-count limit. See, e.g., Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative). In this case, however, Dr. Sundaresan’s testimony describing the level of ordinary skill in the art is short. Ex. 1003 ¶ 8. The amount of testimony is not extensive and, thus, its purported incorporation into the Petition presents little or no imposition on Patent Owner or the Board.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In reply, Petitioner argues that “under any reasonable read of the Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 9 Dr. Sundaresan has a doctoral degree in electrical and computer engineering and has extensive experience in wireless communications. Ex. 1003 ¶¶ 75–78. Dr. Sundaresan also has experience with navigation and geolocation systems such as development of wireless tracking systems, as evidenced by his experience in companies such as NavigateIO Inc. Id. at ¶¶ 77–78. Patent Owner does not argue that Dr. Sundaresan fails to meet requirements for the level of qualifications of one of ordinary skill in the art under its proposed qualifications, which we adopt here. See generally PO Resp.; PO Sur-reply. Based on a review of his qualifications, we determine that Dr. Sundaresan qualifies as a person of ordinary skill at the time of the invention. ¶ 8). In his supplemental declaration, Dr. Sundaresan testifies: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision.” slip op. at 27
Patent outcomesUS 8,786,494 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,786,494
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.