- Inergy Technology, Inc. v. Force Mos Technology Co., Ltd.No claims unpatentablePTAB · May 16, 2025 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–9 were not proven unpatentable because the asserted references did not establish the claimed epitaxial layer or the required coverage of the trench sidewalls.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner defines a person of ordinary skill in the art as having “a Master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶¶ 32–37, 57). Patent Owner does not dispute Petitioner’s definition. PO Resp. 6. We adopt Petitioner’s proposed definition of the level of ordinary skill in the art because it is supported by unopposed declaration testimony and appears to be consistent with the disclosures of the ’634 patent and the asserted prior art references. See Ex. 1001, 1:6–2:33 (describing the invention and related art in terms of integrated circuit design and fabrication); see also Ex. 1006 ¶¶ 1–6 (Hirler); Ex. 1008 ¶¶ 1–37 (Kobayashi); Ex. 1009 ¶¶ 2–29 (Shiraishi). Neither party, moreover, indicates the overall result would change based on a different definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that “the sidewalls of said trenches in said base layer are covered” should be construed to mean that “the entire sidewalls of” those trenches are covered. Pet. 18–19. We refer to this as “the sidewall limitation.” Petitioner shows persuasively that the disclosure and file history of the ’634 patent support its position on the sidewall limitation. Id. Patent Owner, for its part, observes that, after the filing of the Petition. two District Courts adopted the construction proposed by Petitioner.” PO Resp. 21 (citing Ex. 2010, 6–9; Ex. 2011, 23). Patent Owner also agrees to apply Petitioner’s construction for purposes of this proceeding. Id. We agree with Patent Owner that an express construction of the sidewall limitation is necessary to this Decision, id., and adopt Petitioner’s undisputed definition because it is supported by the record. No other claim term requires express construction for purposes of this Decision.” slip op. at 8
- BurdenNot shown unpatentable
“On this record, Petitioner fails to demonstrate that any claim is unpatentable under any ground asserted in the Petition. IV. CONCLUSION For the above reasons, we determine that Petitioner fails to establish by a preponderance of the evidence that claims 1–9 of the ’634 patent are unpatentable.” slip op. at 34
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Alternatively, even if we set aside that timing issue, Dr. Liu’s bare opinion, advanced for the first time during cross-examination, that an epitaxial layer is “obvious” from Hirler’s disclosure is inadequate to support the challenges. Id. at 24–25. We accord little weight to Dr. Liu’s opinion because it is conclusory. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In any event, Petitioner does not meet, on this record, the “high standard” required to establish an inherent disclosure of an epitaxial layer in Hirler. PO Resp. 24.6 Dr. Liu opined for the first time during cross-examination “that it would have been impossible to create Hirler’s more lightly doped n- drift zone layer on top of its more heavily doped n+ substrate layer other than via epitaxy.” Id. at 25 (citing Ex. 2014, 164:16– 165:20). But Patent Owner effectively refutes that proposition with evidence that such a layer “could be created by counter-doping,” even if, as Dr. Liu contends, counter-doping may have been less ideal due to “disadvantageous mobility.” Id. (citing Ex. 2012 ¶ 133; Ex. 2014, 166:15–167:8).” slip op. at 11
Patent outcomesUS 7,629,634 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,629,634 - Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01475 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of IPR challenging claims 1, 2, 4, 5, and 8–11, exercising its discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“litigation, the Board assesses all relevant circumstances, including the merits, to balance considerations such as system efficiency, fairness, and patent quality. See Fintiv, Paper 11; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential). We consider six factors as part of this balanced assessment when determining whether to use our discretion to deny institution: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“vibrations on a surface and using the vibrations to generate a control signal for a device. Ex. 1004 ¶¶ 21, 25, 29, 30, 36. To measure vibrations on a surface, Murakoshi’s sensor must be fixed within the housing and held in position relative to the surface. See Ex. 1003 ¶¶ 142 (“it is necessary to hold a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 174 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 23, 31–35. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“We find Petitioner’s argument based on the combination of Li and iFixit to be a closer call than the argument based on Murakoshi and Stewart. However, because we exercise our discretion to deny the Petition in view of the parallel litigation, we need not determine whether Petitioner meets the standard for institution based on the combination of Li and iFixit.” slip op. at 17
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01369 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution under Fintiv, finding the factors holistically favored discretionary denial of review.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“and Trademark Office under 37 C.F.R. § 42.4(a), we may only institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c). However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“A holistic balancing of the Fintiv factors weighs in favor of discretionary denial of the Petition. As discussed above, factor 2 weighs heavily in favor of discretionary denial because the district court is likely to address patentability issues at trial before we would issue a final written decision. Factor 4 weighs in favor of discretionary denial, as does Factor 5 at least to some degree. Factors 1 and 6 are neutral. Factor 3 weighs against discretionary denial, but this factor does not outweigh the other factors under the circumstances of this case. Thus, the evidence of record favors exercising our discretion to deny institution of an inter partes review.” slip op. at 19
- Parallel petitionsNot reached
“patent. See Pet. 1; PO Resp. 43; Pet. Reply 4–5; Pet. Sur-reply 3–4. Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 43 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Because Petitioner has subsequently ranked this Petition as the first among the two (Pet. Reply 4–5), and because we deny institution based on the Fintiv factors as discussed above, we need not decide whether it was appropriate for Petitioner to file two petitions challenging the ’552 patent.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“Based on the preliminary evidence, Petitioner has not shown that Vardi’s radio resource database from the server, which includes unauthenticated third-party information, teaches the claimed “authenticated access point list” transmitted by or received from the server. Petitioner has not cited to any evidence that a list including previously connected access points and unauthenticated third-party data constitutes the ordinary and customary meaning of the term “authenticated access point list.” To the extent that Petitioner is arguing that the term should be construed in a way that departs from its ordinary and customary meaning, Petitioner has not pointed to evidence for such a departure in the intrinsic record, and we are aware of no such evidence. We note that the ’522 patent states, “[b]y way of example, but not limitation,” that an “authenticated access point may include . . . an access point previously connected with [the] end device.” Ex. 1001, 4:33–36. But this does not appear to suggest that a prior connection is sufficient to authenticate the access point in the context of the ’552 patent.” slip op. at 18
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01368 · APJ Christopher L Ogden · IPR · Institution
The Board denied institution of inter partes review of claims 1–9 under § 314(a), finding the Fintiv factors holistically favored discretionary denial.
RulingsInstitution decision- Parallel petitionsNot reached
“Patent Owner argues that Petitioner failed to justify the filing of two petitions challenging the same patent, and has not provided a ranking of the petitions or explained the differences between the two petitions. Prelim. Resp. 42 (citing Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial Practice Guide”)). Petitioner responds that its “ranking and explanation was at least implicitly included in the Petition.” Prelim. Reply 4. According to Petitioner, the IPR2024-01369 petition “covers all of the claims identified in Patent Owner’s Infringement Contentions” in the parallel district court proceeding. Id. at 4–5. Thus, the present Petition “ranks second, because it covers claims that have not been asserted against Petitioner in the [parallel district court proceeding].” Id. at 5. Petitioner also notes that the claims asserted in this proceeding “focus on the perspective of a server or access point,” whereas the claims in IPR2024-01369 are from the perspective of an end device. Id.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on the preliminary record, it is highly likely that issues bearing on the patentability of the challenged claims will be considered and resolved before we would issue a final written decision. Thus, we determine that the second factor weighs heavily in favor of discretionary denial of the Petition.” slip op. at 12
Discretionary denialPatents in suitUS 9,961,552 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution
The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,694,384 - PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons 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 for the following reasons. First, the construction of “grid point” we adopt here 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 represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 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. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,561,104 - PTAB · Feb 11, 2025 · IPR2024-01143 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under any of its anticipation or obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“Verizon Wireless, Ericsson Inc., and Nokia of America Corporation (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–8 (“challenged claims”) of U.S. Patent No. 7,664,059 B2 (Ex. 1001, “the ’059 patent”). Innovative Sonic Limited (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 13, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 14, “Prelim. Sur-reply”), each of which is narrowly tailored to address Petitioner’s stipulation provided in response to Patent Owner’s arguments for discretionary denial under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Order Authorizing Supplemental Briefing on Discretionary Denial) (precedential), and the resulting impact of that stipulation.1” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“the “[p]etition equates [3GPP-4.60-v860-Specification’s] variables ‘V(A)’ and ‘V(S)’ with the ’059 [p]atent specification’s ‘VT(A)’ and ‘VT(S)’, instead of mapping [3GPP-4.60-v860-Specification’s] variables to the claim language.” Prelim. Resp. 21-22 (citing Pet. 24–25 (citing Ex. 1002 ¶ 81)) (emphasis added). As noted above, anticipation of a patent claim requires a finding that the claim at issue “reads on” a prior art reference. See Atlas Powder, 190 F.3d at 1346. This requires Petitioner to read or “map” each limitation of claim 1 to the corresponding feature found in the 3GPP-4.60- v860-Specification. Petitioner has not done so here.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As an initial matter, the U.S. Court of Appeals for the Federal Circuit guides that, “[e]ven when obviousness is based on a single prior art reference, there must be a showing of a suggestion or motivation to modify the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). But here, we note the evidence relied upon to support Petitioner’s proposed motivation to modify the 3GPP-4.60-v860- Specification is found in paragraphs 98–100 of Dr. Hass’s declaration (Ex. 1002), which merely repeat the identical language from pages 33–35 of the Petition. We thus find this declaration evidence unpersuasive because it is conclusory, and it does not set forth a suggestion or motivation to modify the 3GPP-4.60-v860-Specification. Ex. 1002 ¶¶ 98–100.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,664,059
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.