- Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 22, 2025 · IPR2025-00123 · APJ Robert J Weinschenk · IPR · Institution
The Board denied institution of inter partes review of claims 1–8 and 13–25 under § 314(a), finding the trial date and district court investment outweighed Petitioner’s stipulation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“The District Court recently denied Petitioner’s motion to stay without prejudice. Ex. 2003, 3. The District Court stated that Petitioner’s motion “is premature” because the Board has not decided “whether or not to institute inter partes review.” Id. We decline to speculate based on the record in this case whether the District Court would grant a renewed motion to stay the District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“G. Summary On balance, we determine that Fintiv factors 1–6 favor discretionary denial of institution. Specifically, as discussed above, factors 2, 3, and 5 each weigh in favor of discretionary denial, factor 4 weighs strongly against discretionary denial, and factors 1 and 6 are neutral. We determine that the projected trial date (at least six months before the projected statutory deadline for a final written decision) and the parties’ significant investment in the District Court Litigation outweigh Petitioner’s stipulation. Thus, based on our holistic view of the Fintiv factors, we exercise our discretion under § 314(a) to deny the Petition. III. CONCLUSION For the reasons discussed above, we exercise our discretion under § 314(a) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 10
Discretionary denialPatents in suitUS 8,745,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Truesight Communications LLCInstitution deniedPTAB · Apr 21, 2025 · IPR2024-01477 · APJ Bach V Hoang · IPR · Institution
The Board denied institution of IPR on claims 1–14 under § 314(a), finding that the Fintiv factors favoring denial outweighed the stipulation against denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Statutory Deadline We weigh this factor as favoring the exercise of discretionary denial. The parties agree that the projected statutory deadline for issuing our Final Written Decision (April 23, 2026) is a little more than six months after trial is currently scheduled in the District Court litigation (October 6, 2025). Supp. Br. 4; Prelim. Resp. 19–20. Because the currently scheduled District Court trial is set to begin six months before our deadline to reach a final decision, this factor favors discretionary denial in this case. See Fintiv, Paper 11 at 9. C. Factor 3 – Investment in the Parallel Proceeding We weigh this factor as favoring the exercise of discretionary denial. Showing substantial investment in the District Court litigation, document production is substantially complete and fact discovery will be completed within two weeks of this Decision on Institution. Ex. 2001, 4–5 (Second Amended Docket Control Order). Further, a hearing on claim construction and associated briefing is complete. Id. And, the deadline to serve Institution. Id. at 4. These actions show that there has been notable investment by the parties in the District Court litigation. Furthermore, we must consider this parallel work in relation to the October 6, 2025 District Court litigation trial date, which is six months before the projected statutory deadline of our Final Written Decision. See Fintiv, Paper 11 at 10. As work in the District Court litigation has moved beyond preliminary stages into more advanced stages, instituting at this time implicates at least some duplicative costs. See id. On the matter of petition timing, it is often reasonable for a petitioner to wait to file its petition until it learns which claims are being asserted against it in the parallel proceeding. Fintiv, Paper 11 at 11. Here, Petitioner filed its petition on September 27, 2024, which is four months after receiving Patent Owner’s May 29, 2024 disclosure of asserted claims and infringement contentions and nine months after it was served Patent Owner’s December 29, 2023 infringement complaint. Ex. 1017; Ex. 1018, 1. Further, Petitioner served its amended invalidity contentions in the District Court litigation on December 17, 2024, i.e., after it filed its Petition.5 We do not find the timing of the Petition in this case to outweigh the significant investment in the District Court litigation. Considering the substantial investment in the District Court litigation and the rapidly advancing District Court litigation trial date balanced against the timing of the Petition, we determine this factor weighs in favor of discretionary denial.” slip op. at 11
Discretionary denialPatents in suitUS 8,898,803 - Manitowoc Foodservice Companies, LLC v. Gate CFV Solutions, IncInstitution deniedPTAB · Apr 18, 2025 · DER2023-00006 · APJ John E Schneider · DER · Institution
The Board denied institution of a derivation proceeding because Manitowoc did not show that all elements of amended claim 1 were conceived and communicated to Gate CFV Solutions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“invention and communicated that invention to Respondent prior to July 22, 2021, the filing date of Respondent’s ’693 application. See Pet. 6–10. Of great importance here, however, are the requirements noted above, that Petitioner must show: (1) that Petitioner has at least one claim that is the same or substantially the same as Respondent’s claimed invention; (2) that Petitioner has at least one claim that is the same or substantially the same as the invention Petitioner disclosed to Respondent; and (3) that the challenged claims are drawn to the same or substantially the same invention as the invention Petitioner disclosed to Respondent. See 37 C.F.R. § 42.405(a)(2), 37 C.F.R. § 42.405(b)(3). For the reasons discussed below, Petitioner has not made the requisite showing in the Petition with respect to at least item (2).” slip op. at 9
None - Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution deniedPTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing 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 not foundReasonable expectation not foundNot shown unpatentable
“A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,287,591 - Quectel Wireless Solutions Co. Ltd. v. Koninklijke Philips N.V.All claims unpatentablePTAB · Apr 1, 2025 · IPR2021-00563 · APJ Kevin F Turner · IPR · Remand
On remand, the Board held claim 9 unpatentable as obvious over Agin and Chen, finding Agin teaches the initial power adjustment and the combination teaches the offset determination.
RulingsRemand decision- RemandOther
“Reviewing Patent Owner’s arguments and Petitioner’s assertions, we remain persuaded that one of ordinary skill in the art would have applied the previous power level, i.e., the power level prior to the interruption, and also an offset according to the process illustrated in Agin’s Figure 2. Agin makes clear that its processes in Figure 2 are run “[i]f transmission is not resumed after a transmission interruption” and “[i]f transmission is resumed after a transmission interruption.” Ex. 1004 5:44–50. Figure 2 of Agin is used to make a determination of what the power level would be after an interruption, and that process should be followed, for the first transmission, as well as subsequent transmissions. Agin does not address a separate procedure for the initial transmission after an interruption because the process in Agin’s Figure 2 is generally applicable to all interruptions. This understanding comports with Dr. Ding’s testimony, discussed above, that we credit. See Ex. 2002, 115:13–16, 113:16–22, 110:13–16.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments and continue to be persuaded that there was sufficient motivation to combine Agin and Chen. See FWD 25–26. Petitioner cites multiple rationales for the combination of Agin and Chen, including the benefits of Chen’s techniques, the predictability of such a combination, improvements in performance and transmission quality, reducing uncertainty, smoothing power levels, and argues that these approaches would have had a reasonable expectation of success. Pet. 17–19. Although Agin and Chen are directed to different problems, with different solutions, we discern no negative teaching that would proscribe their combination, and we can envision, via the arguments made in the Petition, combining aspects of each to improve the resulting system.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Ding’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2-3 years of experience in wireless communication systems.” Pet. 5 (citing Ex. 1003 ¶ 25). Patent Owner does not dispute Petitioner’s identification of the level of skill in the art. PO Resp. 17. As such, we continue to adopt and apply Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See DI 5; FWD 6.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We disagree with Patent Owner’s arguments, as we did in the Final Written Decision. See FWD 25–26. We acknowledge the different aims and solutions detailed in Agin and Chen, but we are not persuaded that they are sufficiently different that aspects of Chen could not be utilized in Agin. We also acknowledge that Dr. Jackson’s testimony is clear and he testifies that Chen is sufficiently different and that the processes of Chen would not be readily adaptable to Agin. Weighing the testimonies of Drs. Ding and Jackson, we determine Dr. Ding’s testimony to be more persuasive as to the combination. For example, we concur with Dr. Ding that handover is directly related to communication interruptions in that the handover mechanism exists in order to try to avoid interruptions. Ex. 1003 ¶¶ 67–68, 102, 105–108; Ex. 1111 ¶ 47. Dr. Ding’s testimony is applied to support the conclusion that one of ordinary skill in the art would have been motivated to make the combination. Patent Owner asserts that such a characterization is misleading (PO Sur-reply 20), but we are persuaded that Dr. Ding’s testimony demonstrates overlapping aspects of the disclosures of Agin and Chen and support the Petition’s rationales for their combination.” slip op. at 30
Patent outcomesUS 8,195,216 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,195,216 - Askeladden, L.L.C. v. Jabaa, L.L.C.Adverse judgmentPTAB · Mar 21, 2025 · IPR2024-00916 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner based on abandonment of the contest and cancelled claims 1–24 of the ’637 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file mandatory notices, a preliminary response, a response to the Petition, and a response to the Order to Show Cause and failure to take any other substantive action are consistent with abandonment of the contest. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the challenged claims are appropriate.” slip op. at 3
NonePatents in suitUS 7,480,637 - Askeladden, L.L.C. v. Jabaa, L.L.C.Adverse judgmentPTAB · Mar 21, 2025 · IPR2024-00915 · APJ Hyun J Jung · IPR · Adverse judgment
The Board entered adverse judgment against Jabaa, L.L.C. after abandonment of the contest and cancelled claims 1–24 of the ’637 patent.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“judgment include . . . [a]bandonment of the contest.” 37 C.F.R. § 42.73(b)(4). Patent Owner’s failure to file mandatory notices, a preliminary response, a response to the Petition, and a response to the Order to Show Cause and failure to take any other substantive action are consistent with abandonment of the contest. Under these circumstances, the entry of judgment adverse to the Patent Owner and cancellation of the challenged claims are appropriate.” slip op. at 3
NonePatents in suitUS 7,480,637 - Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · Mar 21, 2025 · IPR2023-01460 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over Dua, Hong, and Lockwood; the Board did not reach the additional grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1003 ¶¶ 43–45); see also PO Resp. 13 (“Nike applies lululemon’s proposed level of skill in the art.”). There being no dispute, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees, and 1 US 3,641,603, issued Feb. 15, 1972 (Ex. 1003, “Lockwood”). 2 US 2005/0193592 A1, published Sep. 8, 2005 (Ex. 1004, “Dua”). 3 US 6,558,784 B1, issued May 6, 2003 (Ex. 1011, “Norton”). 4 H. Hong, The development of 3D shaped knitted fabrics for technical purposes on a flat knitting machine, INDIAN JOURNAL OF FIBRE & TEXTILE RESEARCH, VOL. 19, PGS. 189–194 (Sep. 1994) (Ex. 1005, “Hong”). 5 US 2006/0053658 A1, published Mar. 16, 2006 (Ex. 1006, “Voughlohn”). notes that our Institution Decision adopted that construction, i.e., “that the ‘domed, three dimensional structure’ of the ‘flat-knitted element,’ recited in claims 1, 10, and 11, is formed ‘during the flat-knitting process.’” PO Resp. 12 (quoting Inst. Dec. 6). Thus, the parties make clear that the claims do not encompass forming the claimed “three-dimensional structure” after the flatknitting process is complete. Thus, we maintain the construction in our Institution Decision that the claimed “central portion having a domed, threedimensional structure” must be formed during the flat-knitting process, and not afterward.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Nike and its expert mischaracterize Hong. After close review of the opinions of both parties’ experts, we credit the opinion of lululemon’s expert as more consistent with Hong’s disclosure than that of Nike’s expert. In particular, lululemon’s expert points to Hong’s unmistakable and explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (quoting Ex. 1005, 5) (emphasis added). That disclosure by Hong of “knitting directly” the 3D shape clearly suggests it is formed as part of Hong’s flat-knitting process, and not as part of some post-knit seaming process. Hong’s additional disclosure of “diminish[ing] the labour cost inherent to the use of two-dimensional fabrics” also cuts against Nike’s notion of an additional step of “forming that two-dimensional pattern piece into a three-dimensional structure” following the flat knitting step. See PO Resp. 21–22.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“d. Conclusion For all the above reasons, we find that the combination of Dua, Hong, and Lockwood teaches or suggests an article of footwear having “a domed, three-dimensional structure” that is formed during “a flat-knitting process” and “shaped to extend above the plane” of “flattened” side portions, as recited in claims 1 and 11. We also find that one skilled in the art would have a reasonable expectation of succeeding in forming an article of footwear having such a domed, three-dimensional structure as a result of combining the teachings of Dua, Hong, and Lockwood. And, because Nike does not otherwise contest that one skilled in the art would have had sufficient reason to combine the teachings of Dua, Hong, and Lockwood or that such combination discloses the remaining elements of claims 1 and 11, we need not further address those uncontested elements. See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“The Board, having found the only disputed limitations together in one reference, was not required to address undisputed matters.”). Thus, we conclude that lululemon demonstrates, by a preponderance of the evidence, that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood.” slip op. at 20
Patent outcomesUS 9,730,484 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,730,484 - Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentablePTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision
Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55
Patent outcomesUS 9,679,286 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,679,286 - Silicon Motion Inc. v. K.Mizra, LLCInstitutedPTAB · Mar 5, 2025 · IPR2024-01241 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR of claims 1–2 and 4–15 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2, 4–7, and 9–15 are obvious over Johnson or Stubbs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below, and based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and 2-3 years of experience in memory system design,” or, alternatively, “a Master’s degree in one of those fields and 1-2 years of relevant experience.” Pet. 9 (citing Ex. 1003 ¶¶ 26–29). Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “that no construction is necessary for any terms for the purposes of this Petition as the challenged claims are invalid under any reasonable construction.” Pet. 9. Patent Owner states that “the Board need not construe any claim term in a particular manner to arrive at the conclusion that the Petition is substantively deficient.” Prelim. Resp. 7. 5 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. In view of the parties’ positions, we determine that we need not expressly construe any terms for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to combine Johnson and Moss is inadequate. See Prelim. Resp. 20–24. We tend to agree. In the “Motivation to Combine Johnson and Moss” section, the Petition first asserts that “Johnson and Moss are in the same field of endeavor,” which is insufficient without more to provide a motivation. See, e.g., Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364 (Fed. Cir. 2023). The Petition then asserts that “[t]o provide enhanced flexibility, [one of ordinary skill in the art] in possession of Johnson would look to Moss to incorporate a plurality of delay elements to the data strobe signal.” Pet. 22. This is not persuasive because (a) Petitioner argues that Johnson already provides a plurality of delay elements, (b) Petitioner fails to explain where or how additional delay elements from Moss would be added to Johnson, and (c) Petitioner fails to explain how or why the modification would “provide enhanced flexibility,” or even what “enhanced flexibility” might mean in 9 “a first sampling circuit to sample the first delayed data signal based on the strobe signal” 10 “a second sampling circuit to sample the second delayed data signal based on the received strobe signal” this context. Petitioner also argues that “Moss further discloses that the size of the data path – i.e. the number of data pins in each data path – is a design choice well within the knowledge and ability of a POSITA, and expressly recites examples of 4, 8, and 16-bit wide data paths.” Pet. 23. We agree that varying the width of the data path would have been within level of ordinary skill and would have depended on the particular application, but the Petition fails to explain how or why that would have made it obvious to incorporate various elements of Moss into Johnson.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,111,608
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.