- PTAB · Aug 26, 2025 · IPR2025-00437 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–19 on all grounds, finding a reasonable likelihood that Wang anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Owner”) did not file a Preliminary Response on the merits of patentability. Institution of an inter partes review is authorized by statute when “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(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner contends that “no special constructions are required.” Pet. 10. We agree and do not expressly construe any claim term.” slip op. at 4
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,788,690 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - PTAB · Jul 23, 2025 · IPR2025-00413 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Murphy and over Petrik.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the 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)); see also Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or similar disciplines, and at least two years of professional experience in the automotive industry with research, design, and/or development of automotive electrical and control systems or an equivalent level of skill knowledge, and experience.” Pet. 5–6 (citing Ex. 1004 ¶ 23). In addition, “[t]he more education one has, the less experience needed to attain an ordinary level of skill,” and “more experience in the field may serve as a substitute for formal education.” Id. at 6. At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition. Paper 10, 4. Based on the current record, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision, as it is consistent with the level of ordinary skill in the art reflected by the prior art of record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that all terms be given their plain and ordinary meaning. Pet. 5. Patent Owner “does not believe any terms need to be construed at this time.” Paper 10, 4. Because there is no dispute between the parties, and after reviewing the record, we determine that no express claim construction is necessary for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
Claim constructioncites GrahamPatents in suitUS 9,045,101 - PTAB · Jul 14, 2025 · IPR2025-00153 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–30 on all petitioned grounds, finding a reasonable likelihood that claims 1, 8, 15, and 22 are obvious over Ferro, Oyobe, Donnelly, Letendre, and Seelig.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“motivated and found it obvious to modify Ferro-Oyobe-Donnelly to include Letendre’s graphical slider on the charge level bar graph of the GUI as a third portion, where the operator moves the slider to specify a desired charge.” Pet. 60 (citing Ex. 1003 ¶ 235). Petitioner contends that Ferro- Donnelly already reflects a system with a GUI on a touchscreen for depicting state of charge and modifying that GUI to add a slider for specifying the state of charge is expressly motivated by Letendre’s indication that “it is essential that the driver be able to limit any draw down so travel is not affected.” Id. (citing Ex. 1007, 19). Letendre also describes its GUI with the slider as “a control that the driver sets according to driving needs.” Id. at 59 (citing Ex. 1007, 19). Ferro’s express description of an input/output device for managing charging preferences and Letendre’s express description of a GUI for setting charging parameters suggest using Letendre’s GUI with Ferro’s system. Id. at 60–61 (citing Ex. 1003 ¶ 236). Petitioner also argues that its proposed combination constitutes “applying a known technique ([Letendre’s] slider . . .) to a known device ([Donnelly’s] vehicle GUI showing a charge bar graphic) ready for improvement to yield predictable results of easily allowing a user to choose a desired level of charge.” Id. at 61 (citing Ex. 1003 ¶ 237). Petitioner also contends that “[s]liders on GUIs were known to make inputting information easier, and thus [an ordinarily skilled artisan] would have been motivated to include a slider on the bar graph.” Id. (citing Ex. 1003 ¶ 237). An ordinarily skilled artisan would have reasonably expected to successfully combine Letendre’s slider in the GUI suggested by Ferro-Donnelly because that GUI already enabled setting charging preferences including “amount of charge” (i.e., minimum and maximum). Id. at 61–62 (citing Ex. 1004 ¶ 123; Ex. 1003 ¶¶ 238–239).” slip op. at 25
- Strike new argumentNew argument consideredDecided for petitioner
“impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 56–59. Patent Owner contends that the Andrews declaration is “over twice as long as the Petition at 214 pages” with a substantive portion containing “an incredible 29,831 words.” Id. at 57. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the 29,831 words of the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “thirty-seven (37) additional references in addition to Ferro, Oyobe, Donnelly, Letendre, and Seelig.” Id. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 28
§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,631,987 - PTAB · Jul 14, 2025 · IPR2025-00152 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after finding a reasonable likelihood that claims 1, 6, and 11 are obvious over Sutardja, Donnelly, and Letendre.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “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(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that an ordinarily skilled artisan would have been motivated to incorporate Donnelly’s GUI into Sutardja’s display to more easily and conveniently communicate Sutardja’s state of charge information to a user in a graphical format. Id. at 35 (citing Ex. 1011 ¶ 242; Ex. 1003 ¶¶ 157–159. Petitioner also argues that an ordinarily skilled artisan would have found it obvious to combine Donnelly’s GUI depicting a bar graph indicating the charged and uncharged capacity of a vehicle battery into Sutardja according to well-known methods that would have yielded predictable results. Pet. 36 (citing Ex. 1003 ¶ 160). Petitioner also contends that an ordinarily skilled artisan would have reasonably expected to successfully combine Donnelly’s GUI as it relates to the state of charge into Sutardja’s vehicle, which already processed information about the state of charge of its battery and included a display showing charging parameters. Id. (citing Ex. 1011 ¶¶ 242, 243, Ex. 1003 ¶ 161).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“includes “at least” a bar graph as shown in Figure 7. Id. at 4. Patent Owner argues that Petitioner’s “proposed construction should be rejected” because it “would wrongly import embodiments from the specification.” Prelim. Resp. 20–21. Patent Owner also contends that an ordinarily skilled artisan would recognize that the “unitary charge indicator is not limited to a bar graph representation.” Id. at 21. We discern no dispute over the meaning of “unitary vehicle charge indicator” because Petitioner does not argue that the term is “limited” to the embodiment shown in Figure 7, only that the term “at least includes” that embodiment. Patent Owner does not contend otherwise.” slip op. at 8
- Strike new argumentDecided for petitioner
“Patent Owner argues that Petitioner violates Rule 42.6(a)(3) by impermissibly incorporating arguments from Mr. Andrews’s Declaration into the Petition to avoid the word count limit. Prelim. Resp. 46–49. Patent Owner contends that the Andrews declaration is “over 140 pages” with a substantive portion containing “multiples of the allotted 14000 words” to a petition. Id. at 47. Patent Owner contends that “the only way to potentially understand the Petitioner’s proposed unpatentability challenges is to wade through the extraneous pages cited within the Andrews Declaration.” Id. Patent Owner also complains that Andrews supports his testimony relating to Petitioner’s first challenge by citing “many additional references in addition to references actually ‘relied upon’ by Petitioner.” Id. at 47–48. We discern no violation of Rule 42.6(a)(3). To the contrary, that Mr. Andrews’s supports his extensive explanations of his opinions with citations to dozens of pieces of objective evidence, is a feature, not a bug of his testimony. Mr. Andrews, and Petitioner by extension, leave virtually none of the substance of his testimony unsupported by objective evidence, a practice that we applaud.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,990,788 - Microsoft Corporation v. Partec AGInstitutedPTAB · Jul 8, 2025 · IPR2025-00318 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–10, finding a reasonable likelihood that Lippert and Budenske render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that for purposes of the Preliminary Response it has applied Petitioner’s recitation of the level of skill in the art. Prelim. Resp. 15. Patent Owner has not proposed its own articulation of the level of ordinary skill. We adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Long and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Regarding motivation to combine, Petitioner explains: A POSITA would have been motivated to implement the heterogeneous computing system of Lippert with the dynamic iterative sub-tasks assignment method of Budenske partly because doing so would facilitate efficient distributions of subtasks and processing resources during execution of an iterative application, thus fully leveraging the flexibility of the heterogeneous architecture and “reduc[ing] execution time” of computing iterations. EX1005, 391; EX1003, ¶59. Pet. 17. Petitioner further explains: Second, Budenske provides express motivation from implementing its method in a heterogeneous computing system such as Lippert, namely to “fully utilize the architectural flexibility of such a [heterogeneous parallel computing] system.” EX1005, 390. A POSITA would have found that the dynamic flexibility of the heterogeneous computing system taught by Lippert through the “loose coupling” of computation nodes and boosters (EX1004, [0013], [0015] (describing “a maximum flexibility in providing hardware resources”)), naturally complements the dynamic flexibility of remapping sub-tasks among processing resources to account for the actual processing of the sub-tasks by the processing resources during preceding iterations, as taught by Budenske (EX1005, 391), and that the combination for these teachings would provide increased flexibility for optimally processing iterative applications. EX1003, ¶60.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“teaching away” argument: “As discussed above, Budenske actually teaches away from distributing subtasks between processor types, noting that for its teachings to work all processors utilized for a given task must be of the same type. EX1005 at 392; Section VI.A.1.” Prelim. Resp. 23. We already discussed and rejected above Patent Owner’s contention that Budenske describes its teachings would work only if all processors utilized for a given task are of the same type. Thus, the “teaching away” argument also lacks merit. Alternatively, Patent Owner asserts that even if we reject Patent Owner’s “teaching away” argument, “Budenske’s teachings would have strongly weighed against motivating a skilled artisan to develop a system according to the ‘442 Patent claims.” Prelim. Resp. 23–24. We disagree. As discussed above, Budenske acknowledged that its resource mapping method would be more easily accomplished if all the processors were of the same type. It nowhere indicates, as Patent Owner argues, that the method would work only if all the processors were of the same type. slip op. at 24
§ 103 obviousnessPatents in suitUS 11,537,442 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713 - PTAB · Jun 18, 2025 · IPR2025-00311 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR of claims 1, 3–11, and 17–22 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Mazumder and Mori.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on Petitioner’s first stipulation filed on December 18, 2024.15 Prelim. Resp. 13–15. Patent Owner does not address Petitioner’s updated second stipulation filed on April 8, 2025. This updated second stipulation mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of any potentially conflicting decisions. See Sand at 12. We therefore find that this factor weighs against exercising discretion to deny institution. See id., n.5. 5. Whether Petitioner and the Defendant in the Parallel Proceeding are the Same Party Whereas Petitioner does not address factor 5, Patent Owner argues that the parties to this proceeding are both in the related district court litigation. Pet. 98–99; Prelim. Resp. 15. While it is common in IPR proceedings for the petitioner and patent owner to also be parties in a related district court proceeding, this factor weighs slightly in favor of discretionary denial. Fintiv, Paper 11 at 13–14.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over the combination of Mazumder and Mori. Accordingly, we institute inter partes review with respect to all claims and all grounds asserted in the Petition. 5. Claims 3, 5–7, 9, 10, and 19–22 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’324 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 28–46. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 27
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). For a reference to be analogous art, it must be “either in the field of the applicant's endeavor or [be] reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mazumder because “the presentation of both image types would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process.” Pet. 23–24 (citing Ex. 1003 ¶ 113). Patent Owner argues that “it is hindsight to use ‘the invention to define the problem the invention solves.’” Prelim. Resp. 43 (quoting Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); citing AT&T Services Inc. et. al. v. Innovative Sonic Ltd., IPR2024-001143 (PTAB Feb. 11, 2025)). According to Patent Owner, because neither Mazumder nor Mori teaches visual comparison of image types, the idea to improve the Mazumder-Mori combination by simultaneously displaying different image types and thus permitting visual comparison must be driven by hindsight. Id. at 44–45. But Petitioner cites evidence other than the ’324 patent to support the person of ordinary skill in the art having a desire to visually compare the different images presented in the Mazumder-Mori combination. Pet. 23–24 (citing Ex. 1003 ¶ 113). Specifically, Dr. Wolfe testifies that “the presentation of the actual images captured by the camera and the virtual images simultaneously within the user interface would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process” and that a person of ordinary skill in the art would have recognized this. Ex. 1003 ¶ 113. Thus, Petitioner has shown sufficiently for the purpose of the present decision that Mori teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,562,324 - PTAB · Jun 11, 2025 · IPR2025-00263 · APJ Barry L Grossman · IPR · Institution
Instituted IPR for claims 1–30 on all asserted grounds; the Board found a reasonable likelihood that claims would be unpatentable over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We have determined that there is a reasonable likelihood that Petitioner will prevail on at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims on each asserted ground. PGS Geophysical, 891 F.3d at 1360 (A decision to institute is a “yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.”).” slip op. at 42
- BurdenInstituted
“limitations of clauses 1.3 and 1.4, but concedes that Haley does not disclose that its driver member has “at least one longitudinal edge with a plurality of spaced-apart protrusions,” as required by clause 1.4. Petitioner further asserts, however, that it would have been obvious “to replace Haley’s hydraulic lifter with the claimed ‘lifter,’ disclosed by [Lai]”. Pet. 13. (citing Ex. 1003 ¶ 54). Dr. Vallee’s cited Declaration testimony provides his opinion on this issue, which is consistent with Petitioner’s argument. Petitioner also asserts that “Lai discloses an electrically-powered, mechanical lifting mechanism with a structure that is essentially identical to the ‘lifter member’ disclosed in the ’776 patent. Pet. 13. Petitioner provides side-by-side colored figures from the ’776 patent and from Lai, reproduced below, to illustrate its argument. Pet. 14. According to Petitioner, the side-by-side comparison of Petitioner’s colored versions of Fig. 12, from the ’776 patent, with Petitioner’s colored versions of Figs. 4 A–D, reproduced above, illustrate why and how the proposed modification would have been obvious. As described by Petitioner, the “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow), with pins 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). Pet. 13 (citing Ex. 1001, 9:30–46, 16:34–48, Fig. 12). Petitioner also cites the “two-pin variants: lifter members 465 and 480” shown in Figs. 31, 33 of the ’776 patent. Id. Petitioner also asserts that, as shown in the side-by-side comparison” slip op. at 33
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededOther
“Petitioner asserts the term “lifter member” in the claims of the ’776 patent is “a means-plus-function term” because the claims “lack any ‘recital of structure, material, or acts in support thereof’ for the ‘lifter’ element.” Pet. 7 (citing 35 U.S.C. § 112(f)). Petitioner also asserts “[t]he Federal Circuit held that the term ‘lifter member’ in the related patents is a means-plus-function term subject to §112(f).” Pet. 7. Petitioner cites no authority for this assertion. We understand this assertion to refer to the decision in Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022), identified by Petitioner as a related matter. Pet. 2. In this case, which involved patents from the same family as the ’776 patent (see Section I.C of this Decision), the Federal Circuit concluded that “§ 112 ¶ 6 applies to the ‘lifter member’ limitation, and it must be construed to cover only ‘the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.’” Id. at 22 F.4th 1379–1381. “Where multiple patents derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.” Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1378 (Fed. Cir. 2019) (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (internal quotation marks omitted). Patent Owner asserts that Petitioner: fails to comply with the requirement of 37 C.F.R. § 42.104(b)(3) to specifically identify the structure in the specification associated with that element. As ‘lifter’ is present in every challenged claim under all four grounds, Petitioner’s failure to provide a claim construction for ‘lifter’ is fatal to its Petition. Prelim. Resp. 13. We disagree. First, the claims in the ’776 patent do not use the single word “lifter” alone. The term used in some of the claims, see, e.g., independent claims 1 and 17, and the claims dependent from claims 1 or 17, is “lifter member.” We recognize that the written description in the ’776 patent states “the rotary-to-lifter 100 is also sometimes referred to herein as a ‘lifter member,’ or simply as a ‘lifter.’” Ex. 1001, 9:5–7. This suggests that that term “lifter” is intended to mean the “lifter member,” which makes the use of either term a distinction without a substantive difference. Moreover, neither independent claims 9 or 24, nor the claims dependent from claims 9 and 24, use the word “lifter” or “lifter member. Second, as stated in Petitioner’s Preliminary Reply, the Petition “identifies the portions of the specification that describe the corresponding structure for the ‘lifter’ when comparing its structure to that of the Lai prior art.” Prelim. Reply 1. The Petition provides a colored version of Figure 12 from the ’776 patent (reproduced below) and identifies the following corresponding structures from the Specification of the ’776 Patent: The “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow [ ]), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’776 patent, 9:30–46, 16:34–48, Fig. 12. The ’776 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. [citing] ’776 patent, 32:15–30, 32:48–63. Petition at 13. Based on the record before us, we determine that this identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial, as permitted by our rules.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to mean “a chamber that is distinct from the displacement volume of the hollow cylinder and contains part of the working air volume during operation.” Pet. 8. According to Petitioner “there is nothing in the intrinsic record or any of the claims of the ’776 patent that prevents the ‘main storage chamber’ from being in the hollow cylinder, so long as it is distinct from its separately-recited ‘displacement volume.’” Id. at 9 (emphases added). Patent Owner asserts that “[g]rounds 2 and 4 each requires this Board to interpret the ‘storage chamber’ to be the same structure as the hollow cylinder.” Prelim. Resp. 31. According to Patent Owner, “[t]he Federal Circuit, considering both parties’ claim construction arguments, rejected that construction.” Id. Patent Owner does not provide any citation to support its reference to the Federal Circuit decision. It appears to be a reference to the Kyocera decision considering review of the ITC determination. See Kyocera, 22 F.4th at 1383. That decision, however, construed claims in a related patent to “require two distinct structures: the main storage volume and a smaller “hollow cylinder” contained within the main storage volume. Based on the record before us, Petitioner’s proposed construction is consistent with the Federal Circuit’s construction, which states two structures can be distinct even if one distinct structure is “contained within” the other distinct structure. Although the parties dispute the construction of the “storage chamber” claim limitation, this dispute relates only to Grounds 2 and 4. See Prelim. Resp. 31. We need not resolve it to determine whether to institute review. The parties are welcome to develop their arguments regarding this claim limitation during trial. 3. Conclusion Regarding Claim Construction Our claim construction analyses in this decision to institute a trial do not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,241,776 - PTAB · Jun 11, 2025 · IPR2025-00264 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Koki would prove the claims obvious over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute inter partes review of claims 1–15 on the grounds asserted in the Petition. B.” slip op. at 2
- BurdenInstituted
“not identical” to the structure that Petitioner identifies as corresponding to the “lifter” claim limitation. Prelim. Resp. 19. We agree that these structures are not identical. But on this record, they appear, at least preliminarily, to be equivalent. As Petitioner explains, both structures utilize a rotatable cam with pins to translate a driver (driver member 90 of the ’167 Patent and hammer 6 of Lai) into a position where the driver is ready for use. See Pet. 12–15. Patent Owner does not otherwise contest Petitioner’s showing that Lai teaches or suggests the subject matter set forth in limitations 1.4, 1.5, and 1.6, and we find Petitioner has made a sufficient showing that Lai does so.” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition explicitly states that the “lifter” limitation is a means- plus-function limitation—a contention Patent Owner does not dispute. See Pet. 6; Prelim. Resp. 9–11. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic] Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. The Petition identifies the following corresponding structures from the Specification of the ’167 Patent: The “lifter” of the ’167 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’167 patent, 9:36-52, 16:39-53, Fig. 12. The ’167 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31 and 33. ’167 patent, 32:21-36, 32:54- 33:2. satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner has identified the storage chamber of Haley as being chamber 85, a volume of space bounded by housing 40, extension cylinder 76, and elongate accumulator shell 80. See Pet. 9–10; Ex. 1004 Fig. 1. Haley’s elongate accumulator shell 80 (which Petitioner identifies as the removal top cap) is not the same as chamber 85; it is merely one component of the structure that encloses chamber 85. See id. And, though the Petitioner-identified removable top caps of Haley (a cylinder-shaped component, see id.) and Saari/Enstrom (a removable sleeve that extends into the interior of Saari/Enstrom’s cylinder, see id. at 48–49) have different Petitioner-identified storage chambers. We, therefore, are not persuaded that Petitioner’s contentions necessarily rely on implicit and inconsistent claim constructions.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,845,167
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.