- Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jun 23, 2026 · IPR2025-00219 · APJ Frederick C Laney · IPR · Final written decision
Claims 11–22 were not shown unpatentable under any § 103 ground because the prior art did not teach or suggest receiving the claimed resource allocation and multi-level TPC command on one physical channel.
RulingsFinal written decision- BurdenNot shown unpatentable
“onset to show with particularity why the patent it challenges is 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 the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Moreover, a petitioner should 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references.]” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“The second and third asserted benefits—reduced complexity and reduced latency—rest on the declaration of Dr. Kotzin (Ex. 1003 ¶ 64) rather than on any disclosure of Andersson or Khan. We accord that testimony little weight on this point because it asserts the benefits in conclusory terms without explaining why they would result from inserting a scheduling grant into Andersson’s undefined “other bits,” as distinct from Khan’s separate-slot design.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 14. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’500 Patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner offers a proposed construction for the recited “single physical channel” found in limitation 11.2 and “an accumulation of TPC commands” found in independent claims 12 and 18. PO Resp. 9–17. Petitioner likewise addresses the scope of an accumulation of TPC commands, but Petitioner does not contest directly Patent Owner’s proposed construction for “single physical channel.” Pet. Reply 2–7. We determine, however, that no express construction of any claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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 8
Patent outcomesUS 9,706,500 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,706,500 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Jun 22, 2026 · IPR2025-00217 · APJ Frederick C Laney · IPR · Final written decision
The Board held claims 1–5, 10–15, and 20 not unpatentable under four §103 grounds because the petitioner did not establish the claimed enabled-accumulation indication or single-channel combination.
RulingsFinal written decision- BurdenNot shown unpatentable
“onset to show with particularity why the patent it challenges is 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. 2 US 6,334,047 B1, iss. Dec. 25, 2001 (Ex. 1009). 3 US 2001/0036238 A1, pub. Nov. 1, 2001 (Ex. 1010) 4 US 2004/0190485 A1, pub. Sept. 30, 2004 (Ex. 1005). 5 US 2004/0077370 A1, pub. Apr. 22, 2004 (Ex. 1008). 6 US 6,600,772 B1, iss. July 29, 2003 (Ex. 1004). 7 US 6,529,741 B1, iss. Mar. 4, 2003 (Ex. 1007). 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 the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Moreover, a petitioner should not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references].” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 15. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’153 patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“apparent agreement between the parties: “TPC command accumulation” refers to a process that collects and uses TPC commands from a network device to cumulatively affect transmission power. And having studied the intrinsic record of the ’153 patent, we are in accord. But, we decline to further limit the construction of “TPC command accumulation” in the manner proposed by either party––i.e., (1) each TPC command adjustment must be summed to cumulatively affect transmission power (as proposed by Petitioner) or (2) a TPC command value must be added to an integrator. Although both parties are able to point to disclosures in the ’153 Patent where the TPC command accumulation of an exemplary embodiment is described as using an integrator and/or summing each TPC command adjustment to cumulatively affect a UE’s transmission power (PO Resp. 16 (citing Ex. 1001, 3:39–43, 7:15–29, 9:27–42; Ex. 2016 ¶¶ 35–42); Pet. Reply 4–5 (citing Ex. 1001, 3:39–43, 7:2–6, 7:8–22, 9:28–40)), neither party has demonstrated persuasively that the intrinsic record of the ’153 Patent demonstrates a clear intent to limit “TPC command accumulation” to those particular embodiments.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“A rationale supports obviousness only where the proffered benefit would flow from the specific modification proposed; a benefit that the prior art realizes in a different structural context does not, without more, establish that the same benefit would result from inserting one reference’s element into the other. On this record, the nexus between Khan’s benefits and Petitioner’s “other bits” modification is missing.” slip op. at 40
Patent outcomesUS 10,952,153 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,952,153 - AT&T Services, Inc. / Cellco Partnership D/B/A Verizon Wireless et al. v. Pegasus Wireless Innovation LLCAll claims unpatentablePTAB · Jun 2, 2026 · IPR2025-00083 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over Takeda and Yan; the Board found the alternative Marinier, Yan, and R1-1711853 ground insufficient.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). According to Petitioner, 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 proposed level of skill. See generally PO 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 adopt Petitioner’s formulation of the level of ordinary skill in the art, because it appears consistent with the ’463 Patent Specification and the prior art of record.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Petitioner asserts that elements 1[b] and 1[c] constitute a mean-plus- function limitation under 35 U.S.C. § 112(f) and Patent Owner disputes Petitioner’s assertion. See Pet. 5–7; PO Resp. 11–13. As demonstrated below, there is no dispute as to whether the prior art teaches limitations 1[b] and 1[c] under Petitioner’s claim construction. Therefore, we need not address whether 35 U.S.C. § 112 (f) applies. “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)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We do not agree with Patent Owner’s arguments disputing Petitioner’s backward compatibility rationale for combining the teachings of Yan and Takeda. Patent Owner’s arguments are misplaced because they are premised incorrectly on Takeda’s teachings being limited to 5G NR (i.e., standalone 5G NR), and the proposed combination requiring “mixing standards and behaviors.” To the contrary, Petitioner explicitly asserts that “Takeda states that its teachings are applicable to both 4G and 5G”––i.e., non-standalone 5G. Pet. 14 (citing Ex. 1007 ¶ 239). Likewise, instead of mixing 5G and 4G standards and behaviors as argued by Patent Owner, Petitioner merely proposes retaining Yan’s 4G method of allocating UL channel resources sets with Takeda’s teaching of 5G NR BWPs. See Pet. 14–15. We credit Dr. Roy’s testimony that a person of ordinary skill in the art would have been motivated to modify Takeda’s teachings with Yan’s teachings to provide Takeda with backwards network capability because it is supported by the cited evidence of record. See Ex. 1002 ¶¶ 105, 106 (citing Ex. 1007 ¶ 239; Ex. 1031, 1, 3; Ex. 1033, 5:23–31; Ex. 1034, 10; Ex. 1035, 1, 5; Ex. 1037, 31). Moreover, as pointed out by Petitioner, Dr. Shimony’s deposition testimony regarding the usefulness of backward compatibility and the importance of a non-standalone UE having the ability to communicate over both 4G and 5G standards supports Dr. Roy’s testimony, yet undermines Patent Owner’s arguments. See Ex. 1050, 178:16–182:16; Pet. Reply 14–15. Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Takeda’s teachings with Yan’s teachings to provide Takeda with backwards network compatibility.10 See Pet. 13–15; KSR, 550 U.S. at 418.” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We credit Dr. Roy’s testimony that a person of ordinary skill in the art would have been motivated to modify Takeda’s teachings with Yan’s teachings to provide Takeda with backwards network capability because it is supported by the cited evidence of record. See Ex. 1002 ¶¶ 105, 106 (citing Ex. 1007 ¶ 239; Ex. 1031, 1, 3; Ex. 1033, 5:23–31; Ex. 1034, 10; Ex. 1035, 1, 5; Ex. 1037, 31). Moreover, as pointed out by Petitioner, Dr. Shimony’s deposition testimony regarding the usefulness of backward compatibility and the importance of a non-standalone UE having the ability to communicate over both 4G and 5G standards supports Dr. Roy’s testimony, yet undermines Patent Owner’s arguments. See Ex. 1050, 178:16–182:16; Pet. Reply 14–15. Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Takeda’s teachings with Yan’s teachings to provide Takeda with backwards network compatibility.10 See Pet. 13–15; KSR, 550 U.S. at 418.” slip op. at 15
Patent outcomesUS 10,638,463 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,638,463 - Motorola Mobility LLC / Google LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentablePTAB · May 15, 2026 · IPR2025-00038 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–7, 10–13, 16, 17, 19, and 20 are unpatentable as obvious over Chin; the Board did not find them anticipated by Chin or Whitehorn.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that [a] person of ordinary skill in the art . . . (‘POSITA’) would have had at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field plus at least two years of work or post-graduate experience in image capture, image processing, image display, user interfaces, or a related field. Additional education could offset a lesser amount of experience and vice versa. Pet. 16. Patent Owner accepts Petitioner’s definition. See PO Resp. 25. We adopt Petitioner’s undisputed definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’842 Patent Specification and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that claim construction is unnecessary. As demonstrated in the analysis provided below addressing this claim limitation in view of the prior art, we need not explicitly construe “wherein in each image capture mode a display on the first or second screen is different.” 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))). Similarly, we need not construe any other claim terms or phrases to resolve the controversy between the parties.” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“We agree with Patent Owner that Petitioner’s arguments relying on Kennametal are belated. A “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019)6 at II.I. Thus, we need not consider Petitioner’s belated argument raised for the first time in the Reply. In any event, we agree that Kenneametal is inapplicable for the purpose of supplying a claim limitation missing from Chin’s disclosure. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017) (“Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation.”). Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not 6 Available at www.uspto.gov/patents/ptab/trial-practice-guide. displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See generally Ex. 1004.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the theory of inherency was not raised in the Petition and is therefore waived. Compare Pet. 29–33, with Pet. Reply 11–15. In any event, we also agree that Petitioner’s speculation regarding the disclosure of Chin is insufficient to support a theory of inherency. See Pet. Reply 11–15. As explained above, Chin’s disclosure is silent regarding what is or is not displayed on first display 51 when images are displayed on second display 52 in self-photographing mode, and similarly silent regarding what is or is not displayed on second display 52 when images are displayed on first display 51 in outward-facing mode. See Ex. 1004. Speculation regarding the possibilities and probabilities of what is displayed on first display 51 in self-photographing mode, and what is displayed on second display 52 in outward-facing mode are insufficient to establish inherency. See In re Robertson, 169 F.3d at 745. For the forgoing reasons and based on the entire record developed during trial, the preponderance of the evidence does not support Petitioner’s showing that Chin discloses “wherein in each image capture mode a display on the first or second screen is different.” Accordingly, based on the entire record developed during trial the preponderance of the evidence does not support Petitioner’s showing that Chin anticipates claim 1.” slip op. at 20
Patent outcomesUS 8,836,842 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,836,842 - Google LLC / Motorola Mobility LLC v. Multifold International Incorporated Pte. Ltd.No claims unpatentablePTAB · May 13, 2026 · IPR2025-00058 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 2, 4, 6, 9, 10, 12–14, and 18–20 were not shown unpatentable because Petitioner failed to establish its challenges by a preponderance of the evidence.
RulingsFinal written decision- BurdenNot shown unpatentable
“IV. CONCLUSION Weighing the competing evidence and testimony, we determine that Petitioner fails to establish by a preponderance of the evidence that the Challenged Claims of the ’494 patent are unpatentable.” slip op. at 85
- ExcludeNot reached
“III. PETITIONER’S MOTION TO EXCLUDE Petitioner moves to exclude Exhibits 2034–2038, paragraphs 38 and” slip op. at 84
Patent outcomesUS 9,158,494 not shown unpatentableNonecites KSR · GrahamPatents in suitUS 9,158,494 - Motorola Mobility LLC / Google LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentablePTAB · Apr 28, 2026 · IPR2025-00040 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–9 are unpatentable: claims 1–4 and 6–9 as anticipated or obvious over the asserted references, and claim 5 as obvious over Yook or Yook in view of Purcell.
RulingsFinal written decision- BurdenDecided for petitioner
“We disagree with Patent Owner’s argument because the Petition presents argument and evidence that substantively demonstrates, with clarity and particularity, how and why each reference discloses, teaches, suggests, or otherwise renders obvious the displaying element recited in limitation 1[B]. We agree with Petitioner that “Patent Owner neglects to address the actual substance of the Petition, which clearly addresses this limitation with respect to each reference.” Reply 1–2. The Petition addresses in detail how each asserted reference discloses displaying two applications on two separate displays in accordance with the displaying element, by presenting multiple annotated figures from Yook, Lee, Aguilar, and Purcell. Pet. 27–30, 47–50, 62–63, 77–78. The Petition also cites and quotes the accompanying descriptions for the annotated figures from each prior art reference as well as explanatory expert opinion testimony from Dr. Rodriguez. Id. (citing Rodriguez Decl. Ex. 1003 ¶¶ 70–74, 119–122, 149–150, 182–183; Yook Ex. 1004 ¶¶ 47, 51, 58, 96–101, Figs. 4b, 4d, 5; Lee Ex. 1005 ¶¶ 48–53, Figs. 4, 6, 9, 10; Aguilar Ex. 1006, 7:1–7, Figs. 5–5d; Purcell Ex. 1007 ¶ 16, Fig. 2). We provide detailed examples below of how the Petition maps Yook and Lee onto the displaying element of limitation 1[B] in compliance with the particularity requirement of 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4). Although we do not provide detailed examples directed to Aguilar and Purcell, we find the Petition maps Aguilar and Purcell onto the displaying element of limitation 1[B] in compliance with the particularity requirement of 35 U.S.C. § 312(a)(3) and 37 C.F.R. § 42.104(b)(4).” slip op. at 14
- Strike new argumentNew argument disregardedDecided for petitioner
“Instead, Patent Owner chose to raise an entirely new theory of patentability. Sur-Reply 3–13; Tr. 28:8–20. Patent Owner’s new theory is based on a claim construction that construes claim 1 of the ’756 patent as “recit[ing] a specific order of steps that must be performed in the order written.” Id. at 3–4. “Because of this order, the [displaying element] must occur after both (two) ‘selecting’ steps,” and Patent Owner contends none of the prior art references asserted in the Petition “meets the order required by claim 1.” Id. at 4. We will not consider Patent Owner’s new theory of patentability raised for the first time in its Sur-Reply. See Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean embark in a new direction with a new approach”); see also Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument raised for the first time in the reply brief, which could have been raised in the opening brief, is waived). Patent Owner should have raised its “specific order of steps” argument in the Response. By failing to do so, Patent Owner has waived the argument. Id.” slip op. at 22
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Third, we are further persuaded by Dr. Surati’s testimony that the wave shape visual indicator depicted in Figures 10A–C of the ’756 patent indicates that a user can do something, but not necessarily what that something is (e.g., minimizing or maximizing). Id. at 17 (citing Ex. 1012, 200:1–6). It is telling that Dr. Surati testified that only through repeated use and exposure would a user recognize a relationship between a wave shape and the functions of maximizing or minimizing an application. Id. (citing Ex. 1012, 197:13–199:22). We are also persuaded by Dr. Rodriguez’s testimony regarding the teachings of Yook: Yook therefore teaches giving users the ability to transition a split-screen application back into full screen mode. Further, a POSITA would have understood that this ability would undoubtedly be implemented in the form of a visual indicator, which, from the 2000s to today, is the industry’s universal method of alerting a user to an accessible function. . . . Ex. 1003 ¶ 107 (emphasis added); For claim 5, Yook discloses many different types of “icons” that are used to receive user gesture inputs. See, e.g., Figs. 1, 4e, 5a, 5c, 5d, 6, 7a, 7b, 7c, 8, 9, 10, 11, 12, 13. Examples of these icons are displayed below: Id. ¶ 108; and A POSITA would have understood that Yook’s icons can have a wave shape because the shape taken by a visual indicator, or icon, is merely a matter of common and routine design choice. Indeed, the shape of an icon does not affect its function or how a gesture input is received. Id. ¶ 109 (emphasis added). In short, we are persuaded Petitioner has established by a preponderance of the evidence that a displayed visual indicator that “has a wave shape” is a design choice not affecting the function of the visual indicator, and a visual indicator that “has a wave shape” would have been an obvious design choice to a POSITA in view of Yook.” slip op. at 30
- Skill levelSkill level board ownDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We adopt the parties’ agreed level of ordinary skill in the art, which is consistent with the description in the ’756 patent and the prior art of record.” slip op. at 9
Patent outcomesUS 9,134,756 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,134,756 - Google LLC / Motorola Mobility LLC v. Multifold International Incorporated Pte. Ltd.All claims unpatentablePTAB · Apr 7, 2026 · IPR2025-00059 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–3, 5–9, 15, 16, 19, and 20 are unpatentable as obvious over the asserted combinations of Yook, Bauer, and Lee.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition (Paper 1, “Pet.”) requesting institution of an inter partes review of claims 1–3, 5–9, 15, 16, 19, and 20 of the ’135 patent. Multifold International Incorporated Pte. Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–3, 5–9, 15, 16, 19, and 20 of the ’135 patent on all presented challenges. Paper 8 (“Inst. Dec.”), 2, 23.” slip op. at 2
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentable
“D. Asserted Obviousness Based on Yook 1. Yook (Ex. 1005) Yook relates particularly “to a method and mobile terminal that can divide the screen into individual divided screen areas and simultaneously present user functions on the individual divided screen areas.” Ex. 1005 ¶ 3. Reproduced below are Figures 1 and 2 of Yook. Figure 1 “illustrates an external appearance of a mobile terminal,” and Figure 2 “is an illustration of an exemplary block diagram of the mobile terminal” shown in Figure 1. Ex. 1005 ¶¶ 11, 12. Mobile terminal 100 includes touch screen 140, control unit 160, and storage unit 150, as well as radio frequency unit 110, input unit 120, and audio processing unit 130. Id. ¶ 25. Touch screen 140 includes display unit 141 and touch panel 143 that can be arranged in front of display unit 141. Id. ¶ 30. Mobile unit 100 can activate a screen management program stored in storage unit 150 “in response to a user request,” and control unit 160 can cause display unit 141 to divide the screen into several divided screen areas and output functional view areas related to user functions to the individual divided screen areas. Ex. 1005 ¶¶ 26, 31, 37. Also, “[t]he screen area management program can be loaded on the control unit 160 in response to program may include:” slip op. at 10
Patent outcomesUS 9,141,135 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,141,135 - 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 - Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01258 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1, 2, 4–7, and 9–14 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Inoue–Smith obviousness rationale was insufficient.
RulingsFinal written decision- BurdenFwd mixedMixed
“found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A claim is unpatentable under 35 U.S.C. § 103 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 the 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 skill in the art; and (4) if in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“We do not agree with Petitioner that the fact pattern before us is analogous to Rembrandt. The rationale to combine the teachings of Inoue and Smith provided in the Petition focuses on replacing incandescent bulbs with LEDs, and includes the generic statement that “[t]he numerous record-supported advantages, set forth in Smith provide a clear motivation for use of the teachings of Smith as applied to Inoue, so as to enjoy the advantages set forth in Smith.” Pet. 47. The testimony in Dr. Schubert’s Declaration at pages 99–100 cited in support of Petitioner’s Reply arguments was not cited or otherwise referenced in the Petition. See Pet. 46–55. We find that the Petitioner’s Reply is not responsive to the Institution Decision and is improper because it presents a new rationale to combine the teachings of Inoue and Smith that was not expressed in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Petitioner could have presented its rationale to make out a prima facie case of unpatentability in the Petition. See 37 C.F.R. § 42.23; CTPG § II.I. Accordingly, we do not consider Petitioner’s new rationale to combine the teachings of Inoue and Smith presented for the first time in the Reply. Based on the entire record, but not including Petitioner’s new rationale and newly cited support to Smith and Dr. Schubert’s testimony (Exs. 1013, 1017) presented for the first time in the Reply, we are not persuaded that Petitioner sets forth in the Petition sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to modify the circuit of Inoue to include a light source or LED light source with a twinkling or flashing effect in view of Smith’s teachings. See Pet. 46–47, 49–50, 51–53, 55. Accordingly, we determine that Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of independent claim 9 and dependent claims 3, 5, and 6 would have been obvious over the teachings of Inoue and Smith.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMotivation not foundMixed
“Based on Petitioner’s citations to Holler, Inoue, and Dr. Schubert’s testimony (Ex. 1013), we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to “use the resistive value as taught by Holler in the circuit of Inoue to control the illumination of the light sources so that the other illumination devices in the serial light string will not go dark or change illumination if one of the LEDs fails or becomes disconnected.” Pet. 27; see KSR, 550 U.S. at 418. Based on the entire record and including the reasons explained above in Section II.D.2. addressing anticipation of claim 1 by Inoue, we determine Petitioner shows by a preponderance of the evidence that the subject matter of claims 1 and 10 would have been obvious over Inoue and Holler. See Pet. 26–32.” slip op. at 18
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“We observe that, aside from Declaration testimony of Mr. Altamura and accompanying exhibits, Patent Owner does not offer any additional evidence to establish reduction to practice. An inventor’s testimonial assertion of inventive facts requires corroboration by independent evidence. Brown v. Barbacid, 276 F.3d 1327, 1335 (Fed. Cir. 2002). The purpose of the corroboration requirement is to prevent fraud, by providing independent confirmation of the inventor’s testimony. Kridl v. McCormick, 105 F.3d 1446, 1450 (Fed. Cir. 1997). Without the requirement of independent corroboration, there would be a great temptation to commit perjury and the adverse party would be effectively precluded from a successful rebuttal. Price v. Symsek, 988 F.2d 1187, 1194–95 (Fed. Cir. 1993). A rule of reason applies to determining whether the inventor’s testimony has been corroborated. See id. at 1195. “The rule of reason, however, does not dispense with the requirement for some evidence of independent corroboration.” Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). Accordingly, based on the entire record, we find that Mr. Altamura’s Declaration testimony is uncorroborated. Yu is prior art to the ’252 Patent because Patent Owner is unable to establish actual reduction to practice earlier than the July 31, 2006, filing date of Yu.” slip op. at 51
Patent outcomesUS 11,096,252 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,096,252 - Ledup Manufacturing Group Ltd. v. Seasonal Specialties, LLCSome claims unpatentablePTAB · Feb 19, 2026 · IPR2024-01259 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1, 2, 4–7, and 9–15 are unpatentable; claims 3 and 8 are not shown unpatentable, principally because the Petition lacked a sufficient motivation to combine Inoue and Smith.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“We do not agree with Patent Owner’s argument because it advocates for the importation of functional limitations from the ’794 Patent Specification into the claims––namely the disclosure that the bypass circuit continues to conduct electricity, and keeps the remaining lights lit, even when one or more individual lighting elements in the series are burned out, missing, or defective. See PO Resp. 7–9. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Moreover, the language that Patent Owner wishes to import into the claim from the Specification is functional language that describes the function of the resistor bypass circuit. As explained below in the section addressing the subsequent claim recitation “conducting current at all times across the light sources when current is flowing through the circuit regardless of whether the LED light source are conducting current therethrough,” functional language is evaluated in view of the applied prior art to determine whether it imparts additional structure to distinguish the claimed invention over the prior art. Accordingly, to the extent the preamble recitation is limiting, we need not provide an express construction for “[a] resistor bypass circuit for a series lighting circuit.”” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“We understand the term “inherent resistance” to mean the resistance at a particular operating current or voltage across the LED light source. Neither party disputes our understanding of the term “inherent resistance.” See Dec. on Inst. 9–10; PO Resp. 7–9; Pet. Reply.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in electrical engineering, physics, materials science, or a related discipline, and four years of practical experience in designing or fabricating LED lighting systems, including controlling and driving LEDs,” or alternatively “would have had a master’s degree and three years of experience, or a Ph.D. degree and two years of experience.” Ex. 1013, 31 ¶ 3; see also Pet. 18. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill in the art for the purpose of institution. See PO Resp. 2. 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 ’794 Patent Specification and the asserted prior art.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We do not agree with Patent Owner’s arguments because, as explained above in Section II.A., we decline to import functional language into the claim from the Specification to construe the preamble recitation as requiring the function of “continu[ing] to conduct electricity and keeps the remaining lights lit, even when one more individual lighting elements in the series are out, loose, broken, missing/removed, or defective.” Having considered both parties’ arguments and corresponding cited supporting evidence, we are persuaded that Inoue discloses each of the limitations of claim 1. Based on the entire record, we determine Petitioner shows by a preponderance of the evidence that claim 1 is anticipated by Inoue. See Pet. 25–26.” slip op. at 14
Patent outcomesUS 11,533,794 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,533,794
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.