- Apple Inc. v. Varia Holdings LLCAll claims unpatentablePTAB · Feb 27, 2026 · IPR2024-01362 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over Willgert and Mooney, or over Willgert, Mooney, Holloway, and Pitroda for claims 3–6, 10, 11, and 13–17.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner “disputes the narrow range of educational experiences in the Petition’s POSITA definition, but does not otherwise dispute the remaining portion of the definition.” PO Resp. 12. Patent Owner contends that person of ordinary skill in the art: [W]ould have been someone “with at least a Bachelor’s degree in Electrical Engineering, Computer Science, or a related field, with a background in radio frequency communications and software development, as well as approximately two years of experience working with or researching radio frequency communication systems. Lack of work experience can be remedied by additional education, and vice versa.” PO Resp. 12 (citing Ex. 2004 ¶ 34).7 Based on a review of the record, we adopt Patent Owner’s proposed level of ordinary skill in the art, with its inclusion of a Computer Science background, because it is consistent with the evidence of record, including the asserted prior art and ’974 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our Decision would not be altered if Petitioner’s definition applied.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Patent Owner’s description of the characteristics and operation of a wireless mobile phone, which are not in dispute. Also, the Specification’s description of wireless mobile phones is relied on by Patent Owner in its arguments regarding the construction of “voice call signal,” as discussed below. Nonetheless, Petitioner argues that it is unnecessary to construe the term, “wireless mobile phone.” Reply 4. We agree. The term “wireless mobile phone” is only used in dependent claim 19 (not in independent claim 12, as Patent Owner alleges), and the principal reference relied on by Petitioner (Willgert) explicitly discloses the use of a mobile telephone. Ex. 1001, 12:2; Ex. 1004 ¶¶ 30–32. For these reasons, and because our analysis of the issues set forth below is not dependent on Patent Owner’s proposed construction, it is unnecessary to adopt Patent Owner’s construction or otherwise construe the term “wireless mobile phone.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“to an emulated radio frequency data input method” (Ex. 1001, 1:20–21), and the other references to emulation, are consistent with a conclusion that the claims encompass the “functional emulation” option as described above. However, there is no basis for adding the negative limitation proposed by Patent Owner (“without the use of a physical RFID transponder”). Omega Engineering, 334 F.3d at 1333 (rejecting a construction because “neither the plain text of the claims, the specification, nor the file wrapper justifies the imposition of this negative limitation”). See also BillJCo, LLC v. Apple Inc., No. 2023-2189, 2023-2190, 2025 WL 1417957, at *1 (Fed. Cir. May 16, 2025): Our court has “identified claim constructions that exclude a particular element as including a ‘negative limitation’ and held that such exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Ethicon LLC v. Intuitive Surgical, Inc., 847 F. App’x 901, 907 (Fed. Cir. 2021). Patent Owner’s argument that the claim language, “[a] transceiver . . . configured to output . . . RFID transponder [signals or data],” only makes sense “if the transceiver is not itself an RFID transponder” (Sur-Reply 10) is not persuasive. Examination of the complete version of the passage that Patent Owner only paraphrases — “[a] transceiver configured to output voice call signals in the first state and to output RFID transponder signals in the second state” — shows that the transceiver is capable of both voice call and RFID functions, and thus there is no inconsistency in allowing the RFID function to be performed by RFID transponder circuitry incorporated into the transceiver.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner argues that this combination would have been motivated by the fact that Willgert teaches that integrating its communications unit into a mobile telephone designed for Bluetooth communication was a “highly user-friendly application,” and that it was well known practice to use a Bluetooth headset wirelessly communicating with the phone to enable hands-free phone calls, as specifically taught by Mooney. Pet. 14–17 (citing Ex. 1004 ¶¶ 8, 30–32; Ex. 1005, Fig. 3, ¶¶ 7, 39, 46–48; Ex. 1021; Ex. 1003 ¶¶ 72–76). Petitioner further argues that Bluetooth headsets were widely available, that incorporating the headset involved known methods yielding predictable results, and that one of ordinary skill would have reasonably expected to succeed in combining the teachings of Willgert and Mooney. Id. at 17–19 (citing Ex. 1004 ¶ 10; Ex. 1005, ¶ 8; Ex. 1017, 1, 3; Ex. 1021, 2; Ex. 1003 ¶¶ 77–79). Patent Owner does not specifically address the issue of motivation to combine Willgert and Mooney. See generally PO Resp. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Willgert and Mooney as proffered by Petitioner with a reasonable expectation of success.” slip op. at 31
Patent outcomesUS 8,381,974 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,381,974 - Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.All claims unpatentablePTAB · Feb 23, 2026 · IPR2024-01312 · APJ Mary C Hoffman · IPR · Final written decision
Claims 1, 2, 4–6, 16, 17, and 19–21 are unpatentable as obvious over Lundahl and Larsen; Ground 2 was conceded, and the motion to exclude was denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner asserts that Petitioner has not provided a valid justification for requiring a POSITA to have both an engineering degree and a medical degree. Prelim. Resp. 22. We agree, insofar as Petitioner has not clearly set out any particular explanation or evidence in support of its dual-degree requirement. In all other respects, we note that the parties’ proposed definitions are largely similar. Because we determine that Patent Owner’s proposed definition is reasonable and consistent with the ’028 patent and the cited art, we adopt Patent Owner’s definition. In any event, our Decision does not turn on this level of skill determination. B.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“device “[f]or the treatment of large-area tissues,” such as the backs of human patients, wherein several applicators 13 are “flexibly connected to each other through hinges.” Id. (quoting Ex. 1004 ¶ 72). Petitioner asserts that a POSITA would have been motivated “to incorporate Larsen’s solution of connecting light applicators by hinges, to allow for adjustability of Lundahl’s device to provide the desired irradiance and irradiance uniformity to all target areas during PDT.” Id. (citing Ex. 1015 ¶ 127). According to Petitioner, a “POSITA would have had a reasonable expectation of success in combining Lundahl with Larsen, because both references describe similar illuminators for using light to treat conditions on a patient’s skin.” Id. at 31 (citing Ex. 1015 ¶ 128). Petitioner’s proposed modification of Lundahl also involves using LEDs as a light source instead of Lundahl’s fluorescent tubes. Id. According to Petitioner, a POSITA would have been motivated to make this change because: (1) LEDs had a lower cost and a longer lifetime than fluorescent tubes; (2) fluorescent tubes were known to have inconsistent light output within the tube itself; and (3) “the use of LEDs would be more practical to reduce spacing between light sources and the edges of the panels, as opposed to the bulky metal couplings at the end of fluorescent tubes, to reduce optical dead space across the light surface.” Id. (citing Ex. 1014, 4:41–42, 6:31–42; Ex. 1015 ¶ 129). Petitioner asserts that a POSITA would have had a reasonable expectation of success with this modification because Lundahl and Larsen “describe similar illuminators and the conversion from fluorescent tubes to LEDs was a routine practice prior to 2015.” Id. at 32 (citing Ex. 1015 ¶ 131). Patent Owner does not meaningfully dispute the Petitioner’s proposed reasons to combine Lundahl and Larsen. See generally PO Resp. To the extent Patent Owner argues that a POSITA would not have been motivated to make the combination because it would negatively affecting uniform illumination (PO Resp. 24), the motivating benefit here—using adjustable LED panels instead of monolith fluorescent tubes—outweighs the alleged disadvantages for the many reasons given by Petitioner, including greater adjustability and improved LED performance. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify.”); Reply 14. We are persuaded that a POSITA would have been motivated to combine Lundahl and Larsen for the reasons advanced by Petitioner.” slip op. at 20
- Obviousness (§103) › KSR rationalesMotivation foundDecided for petitioner
“Patent Owner further argues that Petitioner’s reasoning (i.e., that it would have been obvious to try placing the hinges on the inner side surfaces) is unsupported and conclusory. PO Reps. 53–54. Patent Owner argues that Petitioner fails to identify a single prior art reference showing hinged structures on inner side surfaces. Id. This argument ignores that Larsen expressly identifies hinges on at least bottom side surfaces, and Petitioner merely proposes modifying their location from the bottom sides to inner sides. We find credible Dr. Grove’s testimony that relocating hinges would have been within the level of ordinary skill in the art. Ex. 1015 ¶ 155. Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9 We further point out that the ’028 patent also suggests that gaps do” slip op. at 24
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Jokerst testifies that a POSITA would have been discouraged from placing hinges between Larsen’s adjustable applicators, because the hinges would create gaps that interfere with uniform illumination as well as the panels’ wiring, and create issues with the use and alignment of the panels. Ex. 2050 ¶ 175. However, a system with discrete panels connected by hinges (like in Larsen) will already have wiring, use and alignment technical challenges, regardless of the location of the hinges— the expected consequence of connecting multiple movable electronic panels. Moreover, the ’028 patent acknowledges in its discussion of conventional illuminators that placing hinges between panels was already known. Ex. 1001, 2:7–15. With respect to Dr. Jokerst’s opinion that the hinges would create gaps negatively affecting uniform illumination, we are persuaded that it would have been within the skill of a POSITA to locate the hinges on the inside surfaces “in a nearly flush arrangement,” such that the gaps would be minimized. Id.; Ex. 1015 ¶ 155. We also credit Dr. Grove’s supplemental testimony on this issue, directly refuting Dr. Jokerst’s testimony regarding gaps and uniform illumination (and therefore within the proper scope of reply, contrary to Patent Owner’s argument otherwise (Mot. 9). See Ex. 1026 ¶¶ 17–20 (explaining LED light divergence and that the physical space caused by hinges “is easily addressed” to maintain uniform illumination).9” slip op. at 24
Patent outcomesUS 11,697,028 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,697,028 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAll claims unpatentablePTAB · Feb 17, 2026 · IPR2024-01132 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–3 and 5 are anticipated by Anzai, claim 4 is obvious over Anzai and Yamazaki, and claims 1–7 are obvious over Yamazaki and Anzai.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl., ¶ 23). Patent Owner’s expert, Dr. Bretschneider testifies that In my opinion, the field of “electronic and optoelectronic device design” is too broad. A POSITA of the ’121, had at least a Bachelors’ degree in a field of engineering or physics and at least two to three years of professional experience related to the design and manufacture of the relevant aspects of flat panel displays. Additional relevant graduate education related [sic] could reduce but not eliminate the time requirement for professional experience. While Dr. Neikirk proposes a different definition of a POSITA, the differences do not have material effect on my opinions rendered below. Regardless of which definition of a POSITA were used, my conclusions would remain the same Ex. 2005, Bretschneider Decl., ¶ 39. We agree with and will apply Petitioner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’121 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001). We note that our conclusions would be the same even if we applied Patent Owner’s slightly narrower definition of a POSITA.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find these definitions to be of some help in construing this term. We find that the common thread is that a “passivation layer” is an insulating layer that provides protection from the environment to the layers below it. See Ex. 1012, 140; Ex. 1013, 542, Ex. 1014, 798; Ex. 2010, 3; Ex. 2013, 1. We find this construction to be most consistent with the broad claim language and the disclosure in the Specification. Although “tying up dangling bonds,” may be a mechanism by which some materials provide such protection, nothing in the Specification or the extrinsic evidence provided appears to require that. Also, while chemical protection may be one kind of protection none of the evidence suggests that is the only protection that is provided. Moreover, nothing in the Specification supports reading a chemical protection requirement into the construction. Thus, we decline to adopt that portion of Patent Owner’s construction. Instead, we construe passivation layer as “an insulating layer that provides protection from the environment to the layers below it.” We need not construe the term any further to resolve the parties’ dispute over this claim language. See Realtime, 912 F.3d at 1375.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“constructions for “passivation layer” and “capping layer.” We find that Petitioner has presented sufficient evidence to show that Anzai discloses both a “passivation layer” and a “capping layer.” As we explained above, we have construed “passivation layer” to mean “an insulating layer that provides protection from the environment to the layers below it.” Petitioner has shown that “first planarization film 17” is an insulating layer. See Ex. 1002 ¶¶ 62–65. We further find that Petitioner has shown sufficiently that “first planarization film 17” is “formed over the entire surface for flattening, which will protect the semiconductor surface from the surrounding environment.” Id. ¶ 63. We have rejected Patent Owner’s contentions that the film must tie up “dangling bonds,” and instead determined that protecting the surface from the environment is sufficient. Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the “passivation layer” of claim 3. As we explained above, we have construed “capping layer” to be “an insulation layer covering (i.e., capping) an underlying layer or structure.” Here, Petitioner has shown that Anzai’s planarization film 19 meets the claimed “capping layer.” See Pet. 20. We find that Petitioner has shown that it is more likely than not that “planarization film 19” is made of insulating material. As Dr. Neikirk persuasively testifies, Anzai discloses that planarization layer 17 may be made of an organic resin for flattening the surface. EX1003, 4:20-24. While Anzai does not disclose the material for planarization layer 19, it must be made of an insulation material because in the embodiment of Fig. 3A, it is the sole layer between electrode layer 71 and cathode layer 65 forming the second capacitor. Id., 6:3–8; Fig. 3A. Moreover, Anzai discloses that the first planarization film 17 and the second planarization film 19 for the first embodiment “function as the capacitance insulating film for this configuration.” Id., 5:62–67. Ex. 1002, Neikirk Decl., ¶ 62. We find this testimony well-reasoned and entitled to substantial weight. We further agree with Dr. Neikirk that a “POSITA would further understand that the second planarization film 19 is then further disposed on the first planarization film 17 (capping the passivation layer).” Id. ¶ 63 (citing Ex. 1003, 5:3–13; Figs. 2A–B, 3A–B). Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the claimed “capping layer.” Accordingly, we find that Petitioner has shown by a preponderance of” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“motivation to combine Anzai and Yamazaki. See Pet. 25–27; Ex. 1002, Neikirk Decl., ¶¶ 78–79. First, Patent Owner argues that essentially silicon nitride is an inferior material to use for Anzai’s planarization layer 17 compared with organic resin. PO Resp. 13–15. However, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 797, 800 (Fed. Cir. 2021) (emphasis in original). Patent Owner does not argue that silicon nitride would not work, but rather that it would be more difficult and more expensive to use. See PO Resp. 14. But “the fact that the two disclosed apparatus[es] would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter is telling on the issue of nonobviousness.” Grit Energy Solutions LLC v. Oren Techs., LLC, 957 F.3d 1309, 1323 (Fed. Cir. 2020) (quoting Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)). “Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here, Petitioner explains that “a POSITA would have known that organic materials usually have lower dielectric constants than inorganic materials, such as SiN, and a higher dielectric constant is desirable for the insulator in a capacitor since that leads to higher capacitance per unit area.” Pet. 26 (citing Ex. 1002, Neikirk Decl., ¶ 78). Petitioner further explains that this “then allows a reduced area storage capacitance element, one of the objectives of Anzai.” Id. (citing Ex. 1003, code (57)). Patent Owner’s focus mainly on planarization (PO Sur-reply 16–17) ignores that the Anzai’s planarization layers 17 and 19 also “function as the capacitance insulating film.” Ex. 1003, 5:65–67. Thus, although there are tradeoffs, Petitioner has shown sufficiently that a POSITA would have been motivated to incorporate the teachings of Yamazaki regarding potential materials for planarization layers 17 and 19. Second, Patent Owner argues that a Petitioner has failed to provide an adequate reason to select silicon nitride from Yamazaki’s list of potential materials. We disagree. Petitioner has explained the benefits of selecting a high dielectric inorganic material. Pet. 26. Yamazaki provides only three potential options—silicon oxide, silicon nitride, and silicon oxynitride. See Ex. 1004, 11:45–50. Moreover, Dr. Neikirk testified, supported by multiple references, that using silicon nitride was well known in the prior art at the time of the invention. See Ex. 1002, Neikirk Decl., ¶ 75 (citing Ex. 1007; Ex. 1008; Ex. 1009). “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. Indeed, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. This is the case here. Petitioner has shown that a person of ordinary skill seeking to improve the capacitance of Anzai’s planarization layers 17 and 19, without increasing the size of the capacitor, would have looked at the inorganic materials identified in Yamazaki as suitable for the purpose, and it would have been would obvious to choose silicon nitride, a well-known, and predictable material for the application. Thus, we disagree with Patent Owner that Petitioner has failed to show a sufficient reason for selecting silicon nitride from Yamazaki’s list of suitable materials. Third, Patent Owner argues that Petitioner’s contentions only support” slip op. at 37
Patent outcomesUS 7,586,121 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,586,121 - Google LLC v. DH International Ltd.All claims unpatentablePTAB · Feb 10, 2026 · IPR2024-01322 · APJ Brian P Murphy · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Mooney; the Board also found Mooney combined with Lee renders the disputed limitations obvious.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’294 patent would have had at least a bachelor’s degree in electrical engineering, or a related field, and at least two years of experience in design, development, and/or testing of network-enabled consumer devices, and familiarity with payment cards, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Lipoff Decl. Ex. 1003 ¶ 57). “Patent Owner agrees with the Petitioner on the level of ordinary skill in the art.” Resp. 4. Patent Owner adds that a POSITA would have had “at least three years of relevant industry or research experience in wireless communication between devices.” Id. (citing Ex. 2001 ¶¶ 26–29). Mr. Zaheer testifies that a POSITA “would” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The claim language and specification define and describe an “activation cue” in functional terms: a data communication from an external source is received by the cell phone and recognized as an activation cue if it causes the switching element to be assigned its first (activated) state. Ex. 1001, 9:28–31, 9:42–46, 10:14–16, 13:55–60, 14:53–59, 15:4–6, 19:20–26. Patent Owner agrees that “upon an activation cue being received by portable electronic device 10, switching element 44b switches to its activated state.” Resp. 19 (quoting Ex. 1001, 10:14–16). The activation cue may be a predetermined bit sequence, a predetermined contactless data transmission, continuously emitted, pulsed, or punctual, but these are unclaimed non-limiting embodiments of the preferred form of data transmission. Id. at 9:25–26 (“for example a predetermined bit sequence”), 11:20–22 (“One example . . . emit an activation cue in the form of a predetermined contactless data transmission”), 14:65–15:3 (continuously emitted, pulsed or punctual cue). We will not read such preferred embodiments from the specification into claim language that is not so limited. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (care should be taken “not to import into a claim limitations that are not part of the claim”); see also In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“limitations are not to be read into the claims from the specification”); see also IQRIS Techns. LLC v. Point Blank Enterprises, Inc., 2025 WL 727717, *4 (Fed. Cir. 2025) (“It is the claims, not the preferred embodiments, that” slip op. at 15
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“operatively linked to said electronic circuit” under 35 U.S.C. Section 112, sixth paragraph or not, the result is the same. We note there is no presumption of applying means-plus-function analysis to the switching element, because the limitation does not use the words “means for” that would mandate such claim construction treatment, and “switching” may invoke structure as well as function. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349–1350 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). Regardless, we look to the meaning of the claim phrase at issue in view of the specification. We determine that the ’294 patent provides a clear, concise meaning for the switching element upon which both parties rely for construction. Patent Owner’s express agreement with Petitioner, that the claimed switching element is described in the ’294 patent as “any type of device allowing data to be conveyed according to alternate data conveyance operations in response to an activation cue being received by transceiver 18 or not,’” is particularly telling because it is not consistent with Patent Owner’s argument that the switching element means “switching of the data.” Resp. 7, 31 (citing Ex. 1001, 9:28–318). The claim language does not recite, and the specification does not describe, the switching element as a device that switches the data. Therefore, we determine the claimed “data conveyance switching element” means any type of switching device that allows data to be 8 We presume Patent Owner’s citation to “Exh. 2001, 9:28-31” on page 7 was intended to be a citation to the ’294 patent (Ex. 1001), as cited on page 31. whether or not an “activation cue” is received by the cell phone “cue receiver.”” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“[external] data exchange device” as a device with a data transceiver coupled to a circuit that carries out the function of exchanging data. Pet. 7–8 (citing Ex. 1001, 2:14–17, 4:7–14, 9:3–6; Ex. 1003 ¶¶ 67–68). As above, whether we construe the “[external] data exchange device” under 35 U.S.C. Section 112, sixth paragraph or not, the result is the same. Patent Owner, quoting the description of a data exchange device in the ’294 patent, contends that a “[external] data exchange device” “can be any sort of data exchange device comprising an electronic circuit (not shown) therein and a data transceiver 9a.” Resp. 8 (quoting Ex. 1001, 9:4–6). Patent Owner also responds to the Petition by clarifying that “[a]n external data exchange device is not a transceiver but a device with a transceiver.” Id. (citing Ex. 2001 ¶ 48). Petitioner argues in reply that Patent Owner does not contest Petitioner’s mappings of Mooney’s “cordless telephone base unit” or “cellular network infrastructure” to the claimed data exchange devices, such that no construction is necessary to resolve the dispute. Reply 5 (citing Resp. 16–37; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Limitations [1.c] and [1.d] recite “a first [second] data transceiver operatively linked to said electronic circuit [in the cell phone],” both of which are defined functionally as “for exchanging data between said electronic circuit [in the cell phone] and a first [second] external data exchange device over a first [second] communication link.” Nothing in the the other independent claims, further limits the form or function of the “[external] data exchange device,” although a device external to the cell phone may invoke additional structure. We determine the plain meaning of “[external] data exchange device” as claimed and described in the ’294 patent governs: any [external] device that comprises an electronic circuit and data transceiver for exchanging data with the electronic circuit in the cell phone over a communication link. slip op. at 22
Patent outcomesUS 9,022,294 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,022,294 - Apple Inc. v. S.M.R Innovations Ltd And Y.M.R Tech LtdAll claims unpatentablePTAB · Jan 27, 2026 · IPR2024-01048 · APJ Mary C Hoffman · IPR · Final written decision
Claims 1, 5–8, 10, 11, 13, 15, 16, 18, and 19 are unpatentable as obvious under § 103 over the four stated combinations.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not contend that the differences between the parties’ formulations would affect our patentability analysis. PO Resp. 2–4. Petitioner does not dispute that Patent Owner’s declarant, Mr. Ginter, who has a bachelor’s degree and years of experience in wireless communication, qualifies as a POSITA. Tr. 43; Ex. 2009 ¶¶ 5–10. Petitioner also concedes that its challenges do not hinge on which formulation we accept. Tr. 43. We agree that our decision would be the same regardless of the differences between the formulations. We adopt Patent Owner’s proposed formulation, which is supported by declaration testimony and generally consistent with the level of skill reflected in the ’648 patent and the prior art of record. Ex. 2009 ¶¶ 21–25; Exs. 1001, 1004–1009.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree. Although claim 1 recites step 1b before step 1d, method steps are not ordinarily construed to require a specific order of performance unless the claims or Specification directly or implicitly require that specific order. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369–70 (Fed. Cir. 2003). Here, nothing in the express claim language precludes performing step 1d before step 1b. The claim does not expressly recite signaling the device(s) previously “identified as available.” Nor does the claim otherwise specify that step 1b must precede step 1d. For example, the claim does not contain temporal terms like “then,” “next,” or “further.” Although Patent Owner points out that a term of step 1d (i.e., “the” one more available devices) derives antecedent basis from step 1b, this alone does not require performing step 1b before step 1d. PO Resp. 5, 10; Sur-reply 11. Rather, we agree with Petitioner that step 1d’s reliance on step 1b for antecedent basis only serves to clarify that the steps refer to the same device(s), not to determine the performance order. Reply 4, 5. We also agree with Petitioner that claim 1 inconsistently employs antecedent basis for other claim elements, which undermines Patent Owner’s argument that step 1d’s antecedent basis establishes a specific order. Reply 7 (referring to the recited “media content,” “the media content,” and “a media content”).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundDecided for petitioner
“We disagree. Petitioner met its burden to show that the combination would have been obvious. Zhang teaches a cellular phone (which logically receives cellular calls) and routing media to audio devices on its network. Ex. 1004, 3:25–29. Missing in Zhang is an explicit teaching that its cellular calls (as opposed to other media) are routed. Pasanen explicitly teaches routing cellular calls to networked audio devices. Ex. 1006; 4:20–37. Taken together, routing Zhang’s cellular calls across its network would have been obvious to a POSITA. Patent Owner’s argument that Zhang-Fillebrown’s 802.11 or HomeRF network do not support routing cellular calls discounts Zhang’s teaching that “its network can be built on top of many different kinds of communication media” including but not limited to 802.11 and HomeRF, as well as the “optional HomeRF features” Petitioner claims would sufficient to implement the claimed functionality. Ex. 1001, 4:46–50; Reply 20–22 (citing Ex. 1037 ¶¶ 13–15); Sur-reply 3–6 (arguing that HomeRF’s isochronous mode and DECT protocol are optional and would not have been necessary to practice Zhang’s subject matter). And though Zhang does not discuss transcoding or specific HomeRF features/protocols, which Patent Owner argues are necessary for routing cellular calls across Zhang’s 802.11 or HomeRF network, we agree with Petitioner that the ’648 patent also provides scant technical details as to how its system routes cellular calls over its local network, suggesting that such was well known at the time. Reply 17 (citing, e.g., Ex. 1001 7:9–25).” slip op. at 28
Patent outcomesUS 10,547,648 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,547,648 - Boe Technology Group Co., Ltd. v. Optronic Sciences, LLCAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01133 · APJ Thu A Dang · IPR · Final written decision
Claims 1–13 are unpatentable: claims 1–5, 9, and 12–13 as anticipated by Weaver, and claims 6–8 and 10–11 as obvious over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art). In general, we agree with the areas of agreement in the parties’ proposals. In particular, Patent Owner proposes “at least a Bachelors’ degree in a field of engineering or physics,” which includes “electrical engineering or a comparable field of study” as Petitioner proposes. Pet. 4 (emphasis added); PO Resp. 10. We agree with Petitioner that by defining the engineering field as “electrical” or “comparable,” we can exclude engineering fields “having nothing to do with displays, such as biomedical, civil, chemical or environmental engineering.” Pet. Reply 1. Petitioner also proposes approximately “one or more years of professional experience” which includes Patent Owner’s “at least two years of professional experience.” Pet. 4; PO Resp. 10. Furthermore, both parties agree that “[a]dditional graduate education could [reduce . . . the time requirement] for professional experience.” Id. Thus, we adopt both parties’ proposed POSITA of having a Bachelors’ degree in electrical engineering or a comparable field of study, plus at least two years of professional experience, wherein additional graduate education could reduce the time requirement for professional experience. Id. Such proposal comports with the level of ordinary skill in the art reflected in the prior art of record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“The plain language in claim 1 of “auxiliary electrode” does not preclude that the “electrode” may be a power line, bus line, or resistor. Ex. 1001, 8:47–52. Nothing in the Specification clearly precludes “auxiliary electrode” from being a “bus line” or “power line,” as Patent Owner proposes. PO Resp. 25–27. We are unpersuaded by Patent Owner’s contention that the Specification discloses that “the power line ‘PL’ is shown in Figure 1, but the power line PL is not an electrode that is shown in Figure 2.” Id. at 26–27. Here, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as supporting Patent Owner’s contention that an auxiliary electrode cannot be a power line, bus line, or resistor. Id.; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984). That is, although Patent Owner points to Figures 1 and 2 of the Specification for support of its contention, Figures 1 and 2 of the Specification merely show various examples of power line and an auxiliary electrode. PO Resp. 26–27. Thus, although the referenced portions of the Specification discuss various examples wherein an auxiliary electrode may be implemented, nothing in these referenced portions of the Specification clearly precludes the “auxiliary electrode” from being a power line or any electrode that is “the road to get to an end point,” as Patent Owner contends. Id. Patent Owner points to no special definition, implicit or explicit, for “auxiliary electrode” that is set forth in the Specification which supports Patent Owner’s construction with reasonable clarity, deliberateness, and precision. Paulsen, 30 F.3d at 1480.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing. In particular, we find unavailing Patent Owner’s contention that “‘bus line 430’ is not an ‘auxiliary electrode’” (PO Resp. 28–33), because Patent Owner is relying on a claim construction of “auxiliary electrode” as precluding “essential” elements and requiring “more than the end structure of a conductor” (id.), that is not adopted by our construction discussed above. Here, we are persuaded by Petitioner’s reliance on Weaver’s bus line 430 for providing the claimed “electrode,” that is “supplemental to other electrodes in the structure.” Pet. 18; see also Ex. 1004 ¶ 26, Fig. 4; Ex. 1003 ¶ 92. We find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that a POSITA would have understood that “anode 406 and bus line 430 are connected in parallel,” which means that “bus line 430 is a supplemental electrode that reduces the total resistance of the pixel structure.” Pet. 19; Ex. 1003 ¶ 94. Thus, we find availing Petitioner’s contention, supported by Dr. Baker’s testimony, that Weaver’s bus line 430 is an electrode supplemental to other electrodes in the structure that is electrically insulated from transistor 410 by passivation layer 409, wherein OLED 400, which includes cathode 422, organic layer 424, and anode 406, is disposed above bus line 430, and wherein anode 406 of OLED 400 is electrically connected to bus line 430 by via 428. Pet. 16–19; Ex. 1003 ¶¶ 89–94. That is, we find availing Petitioner’s contention that, like the ’509 patent’s auxiliary electrode 120, bus line 430 is electrically insulated from transistor 410, wherein OLED 400 is disposed above bus line 430 and anode 406 electrically connected with bus line 430. Compare Pet. 2–3 (annotated” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We also find unavailing Patent Owner’s contention that the proposed modifications to Weaver would involve changing the process. PO Resp. 33– 34. We agree with Petitioner, whose contentions are supported by Dr. Baker’s testimony, that “to provide additional components from the same layer is a layout change that a POSITA would have been able to perform without changing the process.” Pet. Reply 17–18 (citing Ex 1003 ¶ 157; Ex. 1020 ¶ 45). Further, contrary to Patent Owner’s contention that POSITA would not have combined Weaver with Lee ’053, Song, Lee ’149, or Bae without the use of hindsight (PO Resp. 33–45), as Petitioner points out, Lee ’149, for example, “explicitly teaches that ‘the electrode pattern 45 serves to lower the resistance of the first electrode 41.” Pet. Reply 58 (citing Ex. 1011 ¶ 38). Similarly, Bae “explicitly teaches that the “auxiliary electrodes 139 contact the first electrode 132 to commonly apply a voltage to the sub-pixels” and “reduces the resistance of the first electrode.” Id. at 66 (citing Ex. 1012 ¶¶ 37, 59). As such, Petitioner’s proposed combinations are supported by at least by Lee ’149’s and Bae’s teachings of applying a second electrode to lower the resistance and voltage drop between anode 406 and the VDD line of Weaver. See, e.g., Ex. 1011 ¶ 38; Ex. 1012 ¶¶ 37, 59. We are persuaded by Dr. Baker’s testimony that a POSITA would have understood that higher resistance between the power or ground line to the light emitting device would consume more power and require higher operating voltages, and thus, would have been motivated to implement the solutions of Lee ’053, Song, Lee ’149, or Bae to lower the resistance between anode 406 and voltage source VDD in Weaver. Ex. 1003 ¶¶ 145, 158, 184, 203. We agree with Petitioner, supported by Dr. Baker’s testimony, that a POSITA would have had a reasonable expectation of success the combining the references as suggested, wherein such modification “involves modifications of only routine skill in the art,” which “involve known method,” and “would have yielded predictable results. Pet. 42, 48–49, 59, 67–68; Ex. 1003 ¶¶ 145, 158, 184, 203. That is, we determine that Petitioner has set forth reasoning with rational underpinning explaining why it would have been obvious to combine the teachings with a reasonable expectation of success. Based on the complete record presented, we determine Petitioner has shown by a preponderance of the evidence that claims 6–8 would have been obvious over the combination of Weaver and Lee ’053 or alternatively over the combination of Weaver and Song, and that claims 10 and 11 would have been obvious over the combination of Weaver and Lee ’149 or alternatively over the combination of Weaver and Bae.” slip op. at 33
Patent outcomesUS 9,263,509 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,263,509 - Boe Technology Group Co., Ltd. v. Optronic Sciences LLCSome claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01130 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 5 and 6 are unpatentable over the instituted grounds; claims 7–9 were not shown unpatentable because their scope could not be ascertained.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“After the hearing, with our authorization,1 Patent Owner moved to dismiss this proceeding because, according to Patent Owner, the Petition did not identify all real parties-in-interest as required be 35 U.S.C. § 312(a)(2). 1 IPR2024-01131, Paper 43, 45:1–8. Paper 42. Petitioner opposed the motion. Paper 44. We denied the motion. Paper 46.” slip op. at 2
- Skill levelSkill level board ownOther
“arguments and evidence in support of its proposed definition of the level of ordinary skill in the art at the time of the invention, we determine that Petitioner’s definition is too broad. Petitioner asserts that one of ordinary skill in the art would have “approximately one or more years of professional experience with electronic and optoelectronic system design.” Pet. 3. But Petitioner does not appear to dispute the testimony of Patent Owner’s declarant, Dr. Bretschneider, that “the field of optoelectronics” is “broad and expansive and encompasses solar cells, optical fiber, and any application of LEDs, not just the design of LED packages.” Ex. 2020 ¶ 78. Therefore, one having experience with optoelectronic system design would not necessarily have experience designing LED backlights for LCD displays. We have also carefully considered Patent Owner’s arguments and evidence in support of its proposed definition of the level of ordinary skill in the art at the time of the invention. In light of our analysis of the prior art and the AAPA, we determine that Patent Owner’s requirement of “at least one year of practical experience in design of LED packages and one year of practical experience in design of thermal management systems for LEDs” is not sufficiently precise. Patent Owner does not specify that the required experience is in the context of designing LED backlights for LCD displays. One having this experience would necessarily have experience addressing thermal-management concerns associated with such backlights.” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Because Dr. Baker does not have the requisite experience designing LED backlights for LCD displays, he is not qualified to offer expert testimony from the vantage point of a person of ordinary skill in the art of designing LED backlights for LCD displays. Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1377–78 (Fed. Cir. 2022).” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Neither party asserts that “connecting” is a term of art requiring expert testimony to construe. We agree with Petitioner that “connecting” should be construed consistently with the “fastener” term, because it is the “fastener” (or the second portion thereof) to which the circuit board is “connecting.” Because the parties agree that “fastener” is “[a] feature that attaches or holds something in place, “connecting” means “attaching or holding.”” slip op. at 26
Patent outcomesUS 7,168,842 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,168,842 - PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations 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) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized 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). Based on the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,822,165
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.