- Apple Inc. v. Smart Mobile Technologies LLCSome claims unpatentablePTAB · Jun 3, 2026 · IPR2022-00981 · APJ Jameson Lee · IPR · Remand
On remand, claims 8–11, 13, 17, and 19 were held unpatentable over Rautiola, Regnier, and Sainton; claim 15 was not shown unpatentable.
RulingsRemand decision- RemandMixed
“8–11, 13, 15, 17, and 19, and remanded “for consideration of the patentability of those claims.” Id. at 14. We understand both the reversal and vacature are with respect to Ground 1 of alleged unpatentability, not Ground 2, because the Federal Circuit’s decision did not discuss anything relating to Ground 2. Paper 43. The parties agreed. Paper 44. In this remand proceeding, neither party requested the filing of additional briefing or evidence. In a telephone conference call, both parties expressed agreement with the Board (1) that “there is no issue regarding collateral estoppel or issue preclusion with respect to dependent claims 8– 11, 13, 15, 17, and 19, and (2) that the remand proceeding would not involve the Board revisiting any matter or issue concerning alleged obviousness of claims 1, 8, 9, 11, 13, 17, and 19 over Ground 2.4 Papers 43, 44. The parties also agreed that the remand proceeding would only involve the Board reviewing the alleged obviousness of dependent claims 8–11, 13, 15, 17, and 19 as obvious over Rautiola, Regnier, and Sainton. Id. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. On the record before us, which is the same as the record before us at the time we issued the first final written decision (Paper 34), we determine that Petitioner has proved by a preponderance of the evidence that claims 8– 11, 13, 17, and 19, but not claim 15, of the ’936 patent are unpatentable over Rautiola, Regnier, and Sainton.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for patent owner
“5. Petitioner’s Request to Discredit Dr. Cooklev’s Declaration Petitioner makes several arguments discrediting Dr. Cooklev’s declaration (Ex. 2031) and asserts that Dr. Cooklev’s declaration should be accorded little to no weight. Reply 13–14. We have already considered and rejected this request in the Final Written Decision issued on November 7, 2023. Paper 34, 21–23. Our reasoning need not be reiterated here. Petitioner does not persuade us that Dr. Cooklev’s declaration testimony should be accorded little to no weight.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petition’s definition of level of ordinary skill. See generally PO Resp. Patent Owner’s expert, Dr. Cooklev, accepts Dr. Kotzin’s proposed level of ordinary skill in the art. Ex. 2031 ¶ 24. We adopt Petitioner’s proposal regarding the level of ordinary skill in the art. This level of ordinary skill in the art is supported by the testimony of Dr. Kotzin (Ex. 1003 ¶¶ 20–22) and is consistent with the level reflected in the ’936 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“only when it is analogous to the claimed invention.” Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). A prior art reference constitutes analogous art if it is “from the same field of endeavor” or “reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The petitioner bears the burden of establishing that a reference is analogous art. See Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023).” slip op. at 16
Patent outcomesUS 8,472,936 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,936 - Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentablePTAB · Apr 22, 2026 · IPR2022-01002 · APJ Jameson Lee · IPR · Remand
On remand, claims 1–9 and 12–20 are unpatentable as obvious over Paulraj and Heath under § 103.
RulingsRemand decision- RemandOther
“determining no challenged claim had been proved unpatentable by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively, “Petitioner”). Paper 41. Petitioner appealed to the U.S. Court of Appeals for the Federal Circuit. Papers 43, 44. On January 13, 2026, the Federal Circuit vacated and remanded, on the basis that the Board erred by not considering certain alternative arguments presented in the Petitioner’s Reply (Paper 29), which were properly responsive to claim construction proposed in the Patent Owner Response and adopted by the Board.1 Paper 45. In its Reply, Petitioner alternatively argued that even under the Patent Owner’s claim construction relating to “the plurality of antennas,” the same prior art references nonetheless still rendered obvious the challenged claims. In this remand proceeding, neither party requested the filing of additional briefing, despite having been given an opportunity to make and explain such a request. Paper 51. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Having considered all of the arguments presented in Petitioner’s Reply, we determine that Petitioner has proved by a preponderance of the evidence that claims 1–9 and 12–20 of U.S. Patent No. 9,191,083 B1 (Ex. 1001, “the ’083 patent”) are unpatentable. A.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 2–3 (citing Ex. 1003 ¶¶ 27–28). Petitioner additionally states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 3. Patent Owner does not in its Response address the level of ordinary skill. Patent Owner’s expert witness, Dr. Cooklev, testifies that he “will apply the same definition of the level of skill of a POSITA [as Petitioner].” Ex. 2004 ¶ 19. Based on the evidence of record, we determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience related to the design or development of wireless communication systems. This is consistent with Petitioner’s articulation of the level of ordinary skill, with the exception of Petitioner’s open-ended reference to “at least” two years of experience, because that would improperly encompass a level of experience only possessed by an expert. This articulation of the level of ordinary skill is also the same as what we determined in the Final Written decision issued on November 30, 2023. Paper 41, 6. C. slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner contends: “The plain meaning of the claims requires that the same ‘plurality of antennas’ be used for transmitting and receiving the plurality of signal streams.” PO Resp. 5, 9–12. Citing Dr. Cooklev’s testimony, Patent Owner contends that the ’083 patent’s Specification describes embodiments that use the same antennas for both transmitting and receiving data streams. PO Resp. 7–9 (citing Ex. 2004 ¶¶ 34–35). In the Final Written Decision, we determined: Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas— one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims. Paper 41, 13 (emphasis added). The Federal Circuit agreed with our claim construction. Apple Inc. v. Smart Mobile Technologies LLC, U.S. Ct. App. Fed. Cir., slip op. 24-1419 (January 13, 2026) (2026 WL 91021) (Paper 45, 2–4). We continue to apply the same construction here that we adopted in the Final Written Decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“legally sufficient motivation for modifying Paulraj, but only attempted to show that the modification “could” have been made by one of ordinary skill in the art which is not enough for a showing of obviousness. Sur-reply 8–9. We disagree with Patent Owner. Establishing that certain technique was well-known to one of ordinary skill in the art at the effective filing date of the challenged patent constitutes sufficient motivation to make a modification in accordance with what was well-known in the art to one of ordinary skill, absent factors not present here. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. That would be the situation where a technique was well-known to one of ordinary skill in the art, unless there is actual difficulty in making the application. The “improvement” here, although not articulated by Petitioner, is inherent with the technique, not requiring use of separate antennas for transmitting and receiving, i.e., eliminating the need for additional parts. Further, it is not necessary to show that a modification is the “best option,” because any “suitable option” would suffice. See Intel Corporation v. Qualcomm Incorporated, 21 F.4th 784, 800 (Fed. Cir. 2021). Here, Patent Owner does not assert that one of ordinary skill in the art would have had difficulty modifying Paulraj to use some of the same antennas both for transmitting and for receiving. Nor does Patent Owner dispute that it was well known to one of ordinary skill in the art to use the same antenna(s) for both transmitting and for receiving. We further note the following description in the Specification of the ’083 patent: “The typical CT/MD [cellular telephone/mobile device] has one transmitter and one receiver (T/R), with one antenna.” Ex. 1001, 1:47–48. That statement is fully consistent with Petitioner’s assertion that it was well-known to use the same antenna for transmitting and for receiving. For the foregoing reasons, notwithstanding Patent Owner’s arguments to the contrary, we determine that Petitioner sufficiently has shown that it would have been obvious to one of ordinary skill in the art to modify Paulraj such that some of the same antennas would be used both for transmitting and for receiving, according to limitations 1[b], 1[d], and 1[e].” slip op. at 36
Patent outcomesUS 9,191,083 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,191,083 - Valve Corporation v. Immersion CorporationAll claims unpatentablePTAB · Mar 23, 2026 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–6, 14–16, and 19 are unpatentable based on anticipation by or obviousness over Pratt, and obviousness over Pratt–Ku, Ku, or Ku–Jiang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, PO Resp. 18. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions identified in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision. The outcome of our decision would be the same under Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find insufficient support in the specification or prosecution history to narrow the term “haptic effect” to only one that has not been modified or combined with another haptic effect. The ’738 patent still refers to combined or modified haptic effects as a “haptic effect.” Ex. 1001, 11:35–38 (“a haptic effect may further be modified or combined with another haptic effect” and “the haptic effect can include one or more haptic effects”). We also find no support for importing into the construction of “haptic effect” the ’738 patent’s example in which a haptic effect can be “based on the proximity signal and the touch sensor signal.” That is already an explicit claim limitation. Id. at 14:19–20 (“generate a haptic output signal based at least in part on the first [proximity] and second [touch] sensor signals”). Including that limitation as part of the construction of “haptic effect” would render the limitation superfluous. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“The Board was correct to not include in its construction of ‘menu’ features of menus that are expressly recited in the claims . . . . Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). We also disagree with Patent Owner that the ’738 patent’s references to haptic effects modified or combined with other haptic effects are unclaimed embodiments. The ’738 patent discloses that a proximity-based haptic effect may be combined with a touch-based haptic effect, such as when “a particular haptic effect associated with a particular control on a user interface element [is] further . . . modified or combined with another haptic effect based on the proximity sensor signal,” or when “the haptic effect [to be output by the processor] . . . include[s] a haptic effect meant to confirm ‘pushing’ on a virtual button.” Ex. 1001, 11:32–40. These examples are consistent with the claim language and we find no credible evidence in the record that these embodiments are intended to be excluded from the claimed invention. Thus, we agree with Petitioner that it would be incorrect to construe the term “haptic effect” to include the extraneous limitations Patent Owner proposes. We also agree with Petitioner that a person of ordinary skill in the art reading the ’738 patent disclosure would have understood that a combined or modified haptic effect is still a haptic effect.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We find Petitioner’s arguments persuasive and disagree with Patent Owner’s arguments to the contrary. Ku discloses summing two overlapping vibration signals, one “based at least in part on” data from a proximity sensor and another “based at least in part on” data from a touch sensor. Ex. 1008, Fig. 12 (items 705, 710, and 715). The summed signal 715 is the basis for generating what the user would perceive as a single haptic effect. See Ex. 1004 ¶ 210–212. This meets limitation 1F. We agree with Petitioner’s argument as to why there would have been a motivation to modify Pratt to include Ku’s teachings. Petitioner’s argument is not merely that Pratt was ready for improvement; Petitioner persuasively argues that a person of ordinary skill in the art would have had reason to add Ku’s method for confirming that the user has touched the intended icon to Pratt’s system. Both Pratt and Ku already disclose using both proximity and touch data in generating a haptic effect, and based on the evidence of record, we are of the view that combining the two teachings would not have been uniquely challenging or otherwise beyond the level of ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog presents no evidence that the inclusion of a reader in [electronic children's toys] was uniquely challenging or difficult to one of ordinary skill in the art.” (citing KSR, 550 U.S. at 419–420))” slip op. at 32
Patent outcomesUS 11,175,738 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00003 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–8, 10, 12, 14, and 16–20 are unpatentable under § 103; the Board denied Patent Owner’s revised motion to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art. RMTA 19. Patent Owner’s declarant, Dr. Villasenor, notes that “obviousness must be viewed from the perspective of one of ordinary skill in the field of information security using cryptographic keys for encryption and decryption of digital data, and my opinions are rendered on the basis of the definition of the ordinary artisan set forth in the Petition in view of that further clarification.” Ex. 2010 ¶ 19. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyOther
“In reply, Patent Owner substantially repeats its arguments against Petitioner’s reliance on Peterka for the claim 1 content encryption key identifiers requirements. Reply RMTA 8–9 (citing Ex. 1005 ¶ 121; Ex. 2010 ¶¶ 89, 93–95); see RMTA 14–15. We are not persuaded by these arguments for the reasons discussed in Section III.D.2.e)(2) above.” slip op. at 65
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues that there was no motivation to combine Peterka with Suzuki because Petitioner has argued that “Peterka can already identify content keys by using the allegedly unique sequence numbers or time stamps assigned to each message carrying a single content key.” PO Resp. 41–42 (citing Pet. 25). Patent Owner also challenges motivation to combine Suzuki because it “is not directed to a pay-by-time, pay-per-view, or subscription distribution model, in which a content key grants access to content that different clients must individually decide to purchase in discrete units or increments.” Id. at 36–37. Petitioner responds that, because Peterka disclosed alternative embodiments that did not use sequence numbers or time stamps to identify EMM/ECM messages, one of ordinary skill would have been motivated specifically assign identifications to individual keys as taught in Suzuki. Reply 22 (citing Pet. 26). Petitioner also argues that whether Suzuki was directed to unpurchased content was irrelevant, because Suzuki is cited to show multiple key responses were conventional. Id. at 19–20. Patent Owner does not otherwise specifically address the issue of motivation to combine Peterka, Suzuki, and Bocharov. See generally PO Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Peterka, Suzuki, and Bocharov as proffered by Petitioner with a reasonable expectation of success.” slip op. at 45
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner that the substitute claims are broadening. Because the amended wording only requires the key request to be made “in response to detecting” the boundary, rather than “ahead of” the boundary, the request can occur before or after the boundary. This is not a fanciful or unlikely possibility — such delayed requests are specifically contemplated by the ’178 patent: [I]f the packager 104 is unable to obtain a new content encryption key from the WFM 102 prior to the expiration of the current content encryption key, the packager 104 will continue to use the current content encryption key until such time as it is able to obtain a new key from the WFM 102. Ex. 1001, 6:32–37. It should be noted that the fixed period duration for key rotation may be viewed as a "target" period, as the packager 104 may not expire a key on the exact boundary. Ex. 1001, 8:9–11. The key expiration time from the WFM 102 may be viewed as a "suggested" expiration time, as the packager 104 may not be able to expire the key at the exact specified time.” slip op. at 56
Patent outcomesUS 9,313,178 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,178 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00004 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–7, 9, 11–17, and 19 are unpatentable under §103; the revised motion to amend proposing substitute claims 21–36 is denied.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“Board first must determine whether the 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.” Lectrosonics, Paper 15 at 4 (PTAB Feb. 25, 2019) (precedential). Accordingly, a patent owner must provide a claim listing reproducing each proposed substitute claim, and must make an initial showing to demonstrate the following: (1) the amendment proposes a reasonable number of substitute claims; (2) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of the earlier filing date is sought); (3) the amendment responds to a ground of unpatentability involved in the trial; and (4) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.121.” slip op. at 60
- Expert testimonyOther
“Accordingly, we agree with Petitioner’s contentions regarding the” slip op. at 28
- Skill levelOther
“C. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 14
Patent outcomesUS 11,122,313 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 11,122,313 - Aptiv Services US, LLC v. Microchip Technology, Inc.All claims unpatentablePTAB · Mar 20, 2026 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–18 are unpatentable under § 103 over Al-Shyoukh, Ivanov, and Stanescu; the Board did not reach the alternative ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposal is most like Petitioner’s alternative proposal which would include a bachelor’s degree and two years of experience. However, Patent Owner does not provide a specific number of years of industry experience and Patent Owner would include mixed-signal IC design as an alternative to analog circuit design. We consider analog circuit design to be most pertinent to the problems and solution discussed in the ’074 patent. See Ex. 1001, 1:15–2:44. In addition, we find credible Petitioner’s argument that an ordinarily skilled artisan with a bachelor’s degree would have had two years of experience, whereas Patent Owner’s proposal does not provide a specific number of years. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree and two years of experience in analog circuit design. Nevertheless, the outcome of our decision would be the same under either of the party’s proposals.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“Because neither party has argued that the district-court constructions should be modified or elaborated for this proceeding, and the constructions appear reasonable, we adopt these constructions for this decision. We also take judicial notice of the district court’s Memorandum supporting the claim construction order. Ex. 3001.9” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that “gm boosting” is the only gm enhancement referred to in the ’074 patent, that the ’074 patent uses the terms “gm enhanced” and “gm-boost” synonymously, and that Patent Owner has failed to point to any credible intrinsic evidence of this alleged distinction. Although, “[i]n the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings, CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000), in this case there is evidence to the contrary. In particular, the ’074 patent never refers to “gm enhancement” as a function separate from “gm boosting.” Indeed, the transistors (368, 370, and 382) that Patent Owner identifies as performing the function of “gm enhancement” are disclosed as part of a “gm-boost stage.” Ex. 1001, 5:8–24. Patent Owner’s alleged separation of Figure 3B into distinct “gm boosting” and “gm enhancement” is not consistent with the intrinsic evidence and is based on the conclusory testimony of Dr. Taylor. Thus, based on the evidence of record, we disagree with Patent Owner’s proposed construction distinguishing the terms “gm enhanced” and “gm-boost” in claim 1. Rather, we find persuasive Petitioner’s argument that a person of ordinary skill in the art would have regarded these terms to be synonymous. We need not otherwise construe these two terms to resolve the contested issues in this proceeding. 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We find Petitioner’s argument persuasive that a person of ordinary skill in the art would have had reason to follow Ivanov’s teachings to include an enable/disable function in Al-Shyoukh’s biasing circuit to limit that circuit’s standby current for reasons of power-efficiency. Pet. 25–26; Ex. 1002 ¶¶ 67–68. The evidence of record also suggests that an enable/disable function was well known in the art and that it would have been within the level of ordinary skill in the art to add such a function to a biasing circuit, taking into consideration any known tradeoffs. Pet. Reply 17–18; Ex. 1002 ¶¶ 60, 67–68; PO Resp. 13–14 (acknowledging that “any [person of ordinary skill in the art” would attest[ that] engineering is full of tradeoffs” and listing some of the known tradeoffs that “a [person of ordinary skill in the art] would need to consider”). We also disagree with Patent Owner’s argument that Al-Shyoukh, Rincon-Mora, or other references teach away from adding an enable/disable function to Al-Shyoukh. Patent Owner has not pointed to anything in the prior art that criticizes, discredits, or otherwise discourages investigation into the claimed invention. Meiresonne v. Google, Inc., 849 F.3d at 1382.” slip op. at 34
Patent outcomesUS 9,471,074 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,471,074 - Deltran USA LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- Strike new argumentNew argument consideredOther
“Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Deltran USA LLC / Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01219 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over the Richardson-based grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding[.]” Pet. 22. Patent Owner also “does not propose any terms need to be construed.” PO Resp. 15. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- BurdenDecided for patent owner
“With respect to Petitioner’s allegations that rest on AAPA, we determine Petitioner has failed to show that claims 2, 10, and 11 are unpatentable. Our rules require that a petition for inter partes review must base the asserted challenges on “prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b); 37 C.F.R. § 42.104(b)(2) and (4). And, a petitioner who relies on applicant admitted prior art as the basis, or part of the basis, of a ground, runs afoul of § 311. Qualcomm, 134 F.4th at 1365; see also USPTO Memorandum, Enforcement and Non-Waiver of 37 C.F.R. § 42.104(b)(4) and Permissible Uses of General Knowledge in Inter Partes Reviews (Jul. 21, 2025), available at www.uspto.gov/sites/default/ files/documents/aapa_memo_final__signed.pdf. We acknowledge but reject Petitioner’s position that its combinations discussing AAPA do not “rely” on AAPA but rather rely on U.S. Patent No. 5,793,185 (“the ’185 patent”), described in the ’203 patent as prior art. Pet. Reply 26. A petition for inter partes review must identify, “in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.” 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104 (b)(4). Here, Petitioner’s contention that the Grounds 2 and 5 actually rely on the ’185 patent when discussing AAPA is inconsistent with the Petition. In particular, the Petition does not cite to or direct our attention to any specific details from the ’185 patent to support its challenges. See generally Pet. 54–57, 76–77. Accordingly, Petitioner has failed to show, by a preponderance of the evidence, that claims 2, 10, and 11 would have been unpatentable over the combination of Richardson, Zhao, and AAPA as well as over the combination of Yu, Paparrizos, and AAPA. Petitioner’s alternative allegations based on Epower-20/Epower-21 are considered below.” slip op. at 18
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Magic Leap, Inc. v. Percept Technologies Inc.All claims unpatentablePTAB · Mar 11, 2026 · IPR2023-00495 · APJ Kristen L Droesch · IPR · Remand
Claims 1–3 and 12–14 are unpatentable as obvious over Osterhout and, separately, over Mann ’526 and Vaissie.
RulingsRemand decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“March 15, 2013 filing date, a person of ordinary skill in the art (“POSITA”) would have had a B.S. degree and a Masters degree in Computer Science, Computer Engineering, Electrical Engineering, Physics, or an equivalent field, as well as one to two years of academic or industry experience in wearable electronic devices or comparable industry experience. Pet. 8–9 (citing Ex. 1003 ¶ 21). Although the level of skill in the art was addressed in the Preliminary Response and the Decision on Institution (see Prelim. Resp. 27–30; Dec. on Inst. 6–10), Patent Owner does not address Petitioner’s definition of the level of ordinary skill in the art. See PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’113 Patent Specification and the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“For all of the foregoing reasons, we decline to adopt Patent Owner’s proposed ordinary and customary meaning for “a dynamic eye tracking mechanism in communication with the lens” because it is not supported by the claim language or the ’113 Patent Specification, and is supported only by unsworn attorney argument.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“below, we agree with Petitioner. We find that Osterhout teaches the dynamic eye tracking mechanism is in optical communication with the lens, consistent with its ordinary and customary meaning, because in Osterhout the user’s eye receives optical communication in the form of light transmitted from the translucent lens, and the camera of the dynamic tracking mechanism, in turn, receives optical communication in the form of light from the user’s eye. See Ex. 1005 ¶¶ 164, 304.” slip op. at 20
Patent outcomesUS 8,696,113 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,696,113 - Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision
Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy before us. 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 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34
Patent outcomesUS 9,287,982 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,287,982
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.