- Tesla, Inc. v. Autonomous Devices, LLCSome claims unpatentablePTAB · Oct 21, 2025 · IPR2024-00745 · APJ Russell E Cass · IPR · Final written decision
Claims 45–47, 51, 59, 60, 68, and 69 are unpatentable; claims 56 and 57 are not shown unpatentable. Substitute claims 85–88 and 91 are unpatentable; amendment is granted for claims 92 and 93.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of 3 Patent Owner does not present objective evidence of nonobviousness. skill reflected in the specification of the ’474 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no formal constructions are presently necessary,” and that it “maps [the] prior art in this Petition in a manner consistent with Patent Owner’s allegations of infringement before the district court.” Pet. 8 (citing Ex. 1017; Ex. 1003 ¶¶ 21–25). Patent Owner states that it believes there is no need to construe any terms of the challenged original claims because there is no underlying controversy regarding any claim terms. PO Resp. 10. For purposes of this Decision, we determine that it is not necessary to provide an express construction of any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine Buibas and Sinyavskiy Petitioner argues that “it would have been obvious to partition Buibas’[s] spiking networks according to the specific techniques disclosed in Sinyavskiy” for multiple reasons. Pet. 13 (citing Ex. 1005 ¶¶ 71–72, 85, 92, 179–203; Ex. 1006 ¶¶ 12, 185, 188, 191, Fig. 6A; Ex. 1003 ¶ 63). First, Petitioner asserts, one of ordinary skill “would have been motivated to partition Buibas’[s] spiking neural network as suggested by Sinyavskiy to parallelize task execution on the robot and improve learning capabilities (e.g., through faster learning, greater computing efficiency, and task-specific learning models) of the Buibas mobile robotic apparatus as described by Sinyavskiy and discussed by Dr. Janet.” Id. (citing Ex. 1003 ¶ 64). Second, Petitioner contends, “partitioning Buibas’[s] robotic brain as suggested by Sinyavskiy would have beneficially expanded the range of tasks that the robot could perform by dedicating partitions to specialized tasks.” Id. at 13– 14 (citing Ex. 1006 ¶¶ 12, 185, 188, Fig. 6A; Ex. 1005 ¶¶ 71–72, 85, 92, 179–205; Ex. 1003 ¶ 65). Third, Petitioner argues, one of ordinary skill “would have been motivated to partition Buibas’[s] spiking neural network as suggested by Sinyavskiy to permit unused partitions or unused resources in the partitions to be reassigned for different tasks,” which would allow for a network processing apparatus that has increased processing capability for the same network capacity while also having a lower cost, size and power consumption. Id. at 14 (citing Ex. 1006 ¶¶ 190–192, 105, 34, code (57); Ex. 1003 ¶ 66). Fourth, Petitioner argues that “Buibas briefly mentions that its spiking neural networks can be partitioned but discloses little detail about the partitioning,” which would invite one of ordinary skill to turn to other references, such as Sinyavskiy, for additional detail on how to implement partitioning. Pet. 14–15 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 67). Fifth, Petitioner asserts, combining Buibas and Sinyavskiy would merely “involve[] the application of known techniques (e.g., Sinyavskiy’s partitioned neural network) to a known system (e.g., Buibas’[s] mobile robot and robotic brain) to yield predictable results (e.g., Buibas’[s] robot using a spiking neural network partitioned as taught in Sinyavskiy),” particularly because “the partitioning of the Buibas neural network is reminiscent of Recurrent Fuzzy Neural Networks (RFNNs) that were already commonplace at the end of the 1990’s.” Id. at 15 (citing Ex. 1003 ¶ 68). Finally, Petitioner contends, the proposed combination merely involves “use of known techniques (e.g., Sinyavskiy’s partitioned neural network) to improve a similar system (e.g., Buibas’[s] mobile robot and robotic brain).” Id. (citing Ex. 1003 ¶ 69). Petitioner further argues that one of ordinary skill “would have reasonably expected success implementing the combination, especially as Buibas and Sinyavskiy describe highly similar systems involving spiking neural networks used for training/operating robots.” Pet. 15–16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70). Indeed, Petitioner contends, “Buibas itself confirms that its spiking neural network can be partitioned, while Sinyavskiy provides the details for doing so.” Id. at 16 (citing Ex. 1005 ¶ 92; Ex. 1003 ¶ 70).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“We agree with Patent Owner and Dr. Saber that these “weights” are numerical values associated with connections among neurons, and the “weight vectors” are merely lists of weights. PO Resp. 13–14; Ex. 2001 ¶¶ 66–67. When input is provided to the neural network, the network uses the weights of its connections in a feedforward calculation manner to provide an output that can include an instruction for operating a device. Ex. 2001 ¶ 66. We agree with and find credible Dr. Saber’s testimony that Buibas’s merging of weights or weight vectors results in updated network weights, and does not, by itself, disclose the merging of instruction sets for operating a device, or the correlation of the same set of inputs for all or a portion of a circumstance representation with instruction sets for operating two different devices. Ex. 2001 ¶¶ 65, 67, 69–71.” slip op. at 39
Patent outcomesUS 11,663,474 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,663,474 - Cellco Partnership D/B/A Verizon Wireless / Verizon Corp. Servs. Grp. Inc. et al. v. Headwater Partners I LLCAll claims unpatentablePTAB · Oct 14, 2025 · IPR2024-00809 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1, 2, and 6–18 as obvious over Limont, Wright, and Xu; claims 3–5 as obvious over those references and Polson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have been familiar with the changing of configuration settings of end-user devices to control access of the device to network data services, and storing those configuration settings in a protected partition” and “would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience.” Pet. 7–8 (citing Ex. 1003 ¶¶ 41–43). For institution, we adopted Petitioner’s proposed level of ordinary skill. Inst. Dec. 15. Patent Owner does not challenge Petitioner’s proposal. PO Resp. 6–7 (citing Pet. 7–8). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have been familiar with the changing of configuration settings of end-user devices to control access of the device to network data services, and storing those configuration settings in a protected partition” and “would have gained this knowledge through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience.” Pet. 7–8 (citing Ex. 1003 ¶¶ 41–43). We find that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’042 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes that claim terms be given their plain and ordinary meaning “because the prior art relied on in this Petition meets each claim term under any reasonable construction.” Pet. 7. For institution, we preliminarily adopted Patent Owner’s proposed interpretation of “network data service” to mean “a service that provides network data.” Inst. Dec. 17 (citing Ex. 1001, 1:48–49; Ex. 2001 ¶ 30). Patent Owner responds “that ‘network data service’ is a term of art, and refers to a service in which access to network data is provided.” PO Resp. 7 (citing Ex. 2032 ¶¶ 33–51, 56–59). Patent Owner argues that “data” refers to “data accessibility (i.e., a data plan or data connectivity), as opposed to other types of network services (such as network SMS service or network voice service)” and, therefore, “‘network data service’ refers to connectivity to an access network such that data service can be used (i.e., network data provided by a network data service provider), rather than specific services that might make use of such network data services (such as a content service provider like a webpage provider).” Id. (citing Ex. 2032 ¶ 34). Patent Owner also argues with citations to the record that its proposed interpretation is consistent with intrinsic and extrinsic evidence, including patents assigned to Petitioner. Id. at 9–18. Petitioner replies that Patent Owner’s “new restrictive, exclusionary” interpretation should be rejected because it lacks support in the record, and that one of ordinary skill in the art would not have understood the term to be so restricted. Pet. Reply 1–2 (citing Ex. 1001, 5:4–20; Ex. 1028 ¶¶ 39–42, 44–49), 5, 12–14 (citing PO Resp. 13; Ex. 1001, 5:4–20), 17–18 (citing PO Resp. 15–18; Ex. 1028 ¶¶ 71–77; Ex. 2033; Ex. 2037, 1:66–2:5). Petitioner type of service provides for specific network data service to a particular ‘destinations, URLs or addresses on a network.’” Id. at 7 (citing Ex. 1028 ¶ 50). Petitioner also argues that Patent Owner fails to provide analysis for adopting its new proposed interpretation, the asserted prior art still meets the interpretation, and there is no lexicography or scope disavowal. Id. at 2, 11– 12 (citing PO Resp. 7, 10–13; Ex. 1001, 5:11–20), 15 (citing Ex. 1028 ¶¶ 63–69), 14 (citing PO Resp. 3–4, 11–12). Petitioner further addresses Patent Owner’s asserted extrinsic evidence. Id. at 17–18 (citing PO Resp. 15–18; Ex. 1028 ¶¶ 71–77; Ex. 2033; Ex. 2037, 1:66–2:5). Petitioner also replies that Patent Owner could have, but did not,” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Petitioner argues that Limont, Wright, and Xu each “teach[es] the same subject of managing and updating secure data, including policies, wirelessly on mobile devices,” and because of their similar identification of problems and proposed solutions, one of ordinary skill in the art would have Ex. 1003 ¶¶ 264–267), 20 (citing Ex. 1003 ¶¶ 278–287; Ex. 1004 ¶ 13; Ex. 1005 ¶ 9). Petitioner also argues that the citing of Wright during prosecution of Limont supports that the ordinarily skilled artisan would have considered Limont and Wright to be closely related. Id. at 19–20 (citing Ex. 1003 ¶¶ 268–277; Ex. 1013, 140–141, 145–148, 229–230). Patent Owner does not present any arguments regarding analogous art. See PO Resp. Based on the full record, we determine that Limont, Wright, and Xu are analogous art. Pet. 19; Ex. 1003 ¶¶ 264–287; Ex. 1004 ¶ 13; Ex. 1005 ¶ 9; Ex. 1013, 140–141, 145–148, 229–230.” slip op. at 32
Patent outcomesUS 9,198,042 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,198,042 - AT&T Mobility LLC / AT&T Services Inc. et al. v. Daingean Technologies Ltd.All claims unpatentablePTAB · Oct 8, 2025 · IPR2024-00310 · APJ Mary C Hoffman · IPR · Final written decision
Claims 4–6 and 8 are unpatentable as obvious over Lee1 and Lee2; the Board found the Lee1–Lee2 combination teaches the limitations and has sufficient motivation to combine.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”), on or around the earliest possible priority date of the ’207 patent, would have had “a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems” and “familiarity with the wireless standards and well-known protocols for accessing wireless networks,” and that “[m]ore education may supplement practical experience or vice versa.” Pet. 3, 10 (citing Ex. 1003 ¶ 36). In its Preliminary Response, “Patent Owner generally concurs with [Petitioner’s] description, though would propose that a POSITA only needs two years of experience . . . . [but] does not believe any difference between Patent’s Owner’s view and Petitioners’ view affects the unpatentability analysis.” Prelim. Resp. 24. We agree with Patent Owner that the difference between Petitioner’s and Patent Owner’s formulations would not affect our analysis of patentability. We adopt Petitioner’s formulation, which is supported by expert testimony and is generally consistent with the level of skill reflected in the Specification and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Looking first at the claim language itself, Patent Owner’s construction is unduly narrow. The “for” recitations derive antecedent basis from limitation 4a. Ex. 1001, 36:44–45. Limitation 4a recites “a 4-step” procedure and “a 2-step” procedure. Thus, the claim includes one of each procedure type: “one” 4-step and “one” 2-step (i.e., single instances of each procedure). Patent Owner similarly reads the claim as requiring “one or more” of each procedure type. See Tr. 33:19–34:4. Because limitation 4a provides antecedent basis for a singular 4-step procedure and a singular 2-step procedure, this strongly suggests that the claim requires for the one (or for the single) 4-step procedure but not for all 4-step procedures, and for the one (or for the single) 2-step procedure but not for all 2-step procedures. At trial, Patent Owner’s interpretation was similar, stating, “that would read. . . as for the one or more 4-step . . . procedure and for the one or more 2-step . . . procedure.” See Tr. 33:25– 34:4 (emphasis added). In seeming contradiction, Patent Owner also stated, “I read that as being . . . all 4-step contention random access procedures . . . and all 2-step random access based procedures.” Id. (emphasis added). We note that Patent Owner does not, however, cite any legal precedent for interpreting “one or more” as requiring “all,” or provide reasoning for departing from the default claim construction principle that “one or more” includes “one.” For this reason and for reasons further discussed below, construing “for the 4-step” to mean “for all 4-step,” and “for the 2-step” to mean “for all 2-step,” would improperly import limitations from the Specification into the claims. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”).” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“explained below, we determine that Petitioner has shown by a preponderance of the evidence that claim 4 is rendered obvious over Lee1 and Lee2 (“Lee1–Lee2”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“With these teachings in mind, we are persuaded by Petitioner that incorporating Lee2’s higher power and different ramping into Lee1’s 2-step procedure would have even further reduced the latency of Lee1’s 2-step procedure, and that this would have resulted in different power settings based on procedure type. Pet. 37–38; Ex. 1003 ¶¶ 88–89; Reply 12–13. Patent Owner does not meaningfully dispute this point. See generally PO Resp. 37–42; Sur-reply 12–17. Instead, Patent Owner argues that Lee1’s 4-step procedure would “equally benefit” from reducing latency, and that Petitioner has not explained why a POSITA would not use the same power settings for both procedures, i.e., use Lee2’s same higher power and different ramping in Lee1’s 4-step procedure. See PO Resp. 41–42. However, Petitioner’s burden is to provide a motivation for the proposed combination—in this case, modifying Lee1’s 2-step procedure with Lee2’s higher power and lower ramping. The obviousness analysis does not require Petitioner to explain why the references would not have been combined in an alternative way not proposed by Petitioner. To the extent Patent Owner argues that Lee1 and Lee2 cannot be combined as proposed, and therefore must be combined in this alternative manner, we disagree. For example, Patent Owner does not provide evidence of teaching away or that the proposed combination is inoperable. See generally PO Resp. 37–42; Sur-reply 12–17. Furthermore, we do not see how solving any technical issues in combining Lee1 and Lee2 as proposed would have been beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 418. Furthermore, Petitioner explains why a POSITA would have sought to” slip op. at 26
Patent outcomesUS 10,932,207 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,932,207 - Intel Corporation v. Telefonaktiebolaget LM Ericsson (Publ)Some claims unpatentablePTAB · Oct 8, 2025 · IPR2024-00728 · APJ Russell E Cass · IPR · Final written decision
Claims 1–5, 7, 8, 10–15, and 17–19 are unpatentable as obvious; claims 6, 9, and 16 are not shown unpatentable because the Midya-based grounds fail on the terminal limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full trial record, we continue to adopt Petitioner’s definition of the level of ordinary skill in the art, which is consistent with the ’430 patent and the prior art. In adopting this definition, we note that neither the title nor the “Field of the Invention” portions of the ’430 patent limit the invention to integrated circuits, and Patent Owner does not dispute that claim 1 encompasses inductors that are not provided on an integrated circuit. Ex. 1001, code (54), 1:16–22. Additionally, Dr. Prucnal’s definitions have shifted, and his latest definition purports to be based on Dr. Tentzeris’s characterization of the level of ordinary skill, but changes “experience designing integrated circuits or inductors for semiconductors” to “experience designing integrated circuits and inductors for semiconductors” without sufficient explanation of the reasons for the change. Supp. Prucnal Decl. ¶ 8; Reply Tentzeris Decl. ¶ 56. However, our Decision in this case would not change under Patent Owner’s revised articulation. See Reply Tentzeris Decl. ¶ 57 (stating that his opinion would not change under Patent Owner’s revised definition of the level of ordinary skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“After considering the full trial record, we agree with Petitioner that the phrase “on a semiconductor die” in the preamble of claim 11 is not limiting. First, we determine that the phrase “on a semiconductor die” in claim 11 does not provide antecedent basis for terms in the body of the claim. The body of claim 11 does not refer to “the semiconductor die” or even mention the “semiconductor die” at all, and neither do any of the claims that depend from claim 11. We disagree with Patent Owner’s argument that the phrase “on a semiconductor die” in the preamble of claim 11 provides antecedent basis for the term “the first inductor” in the body of the claim, because the “first inductor” language in the preamble provides antecedent basis for “the first inductor” language in the claim’s body. The “on a semiconductor die” language in the preamble is presented separately and can be easily parsed from the preamble’s language reciting a “first inductor” without impacting the understandability or grammatical completeness of claim 11. Therefore, the “on a semiconductor die” language in claim 11’s preamble is not necessary to provide antecedent basis for the phrase “the first inductor” in the body of claim 11. This use of language in claim 11 is distinguishable from the Federal Circuit’s opinion in Deere v. Bush Hog, cited by Patent Owner, where the preamble term “rotary cutter deck” provided antecedent basis for the term “said deck” recited in the claim body, because in Deere, the words “rotary cutter” appeared directly before, directly modified, and were not easily parsed from the term “deck.” See Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357–58 (Fed. Cir. 2012); PO Resp. 7–8.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We agree with Petitioner that claims 1 and 11 do not require that the first and second inductor be laterally spaced, but instead merely require that the second inductor be positioned at a “predetermined distance” from the first inductor. Nothing in the claim language restricts this “predetermined distance” from being in the X, Y, or Z direction, or requires that the inductors be laterally spaced in the same plane. Moreover, the fact that the ’430 patent Specification describes embodiments where the inductors are laterally spaced in the same plane does not limit the claims to those embodiments. As explained previously, our reviewing court “has expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.” Liebel-Flarsheim, 358 F.3d at 906. “Even when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using ‘words or expressions of manifest exclusion or restriction.’” Id. We see no such “words or expressions of manifest exclusion or restriction” here. Accordingly, we give the term “predetermined distance” its ordinary meaning, which includes a distance in any direction. The parties do not dispute that Taniguchi’s inductors are spaced apart with an insulation layer in between. Therefore, under the ordinary meaning of the claim language, Taniguchi’s second inductor is “positioned at a predetermined distance from the first inductor.”” slip op. at 26
- Prior constructionPrior construction adoptedDecided for patent owner
“We agree with and adopt the ITC’s construction of “closely spaced,” which is “two terminals in proximity to each other (such that the electromagnetic field at a certain distance from the first inductor (where the second inductor is positioned) is reduced.” Ex. 1020, 12. We find that this construction is supported by the intrinsic record, including the Specification of the ’430 patent, which shows terminals being “closely spaced” compared to the dimensions of the inductor itself, and explains that the purpose of the close spacing is to make the field contributions from the two parts of the inductor identical. See Ex. 1005, Figs. 1–2, 4:28–32. Claims 1 and 11 of the ’430 patent lack specific dimensions for either the inductor or the spacing between the terminals, and indicate that the purpose of the close spacing is to “minimiz[e] magnetic field contributions from the terminals.” Ex. 1001, 10:22–25, 11:7–10. Dr. Prucnal’s ITC declaration, although not intrinsic evidence, further supports our conclusion. Although Patent Owner does not propose a construction for “closely spaced terminals,” it appears to argue that this term must be interpreted based on the dimensions of the semiconductor chip described in the ’430 patent. PO Resp. 43. We do not see any basis in the intrinsic or extrinsic evidence to impart such a narrow reading to the claim language, particularly because the ’430 patent Specification does not define the “closely spaced terminals” in relation to a semiconductor chip, and claim 1 is not limited to inductors on a semiconductor chip.” slip op. at 40
Patent outcomesUS 7,151,430 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,151,430 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe 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.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · Oct 6, 2025 · IPR2025-00698 · APJ Kevin W Cherry · IPR · Institution
Instituted review of claims 1–11, 18–20, 23–25, and 28 on all petitioned grounds, based on a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Doolittle, Petitioner contends that an ordinarily skilled artisan for the ’539 patent “would have had an undergraduate degree (i.e., B.S., B.S.E. or the equivalent) in electrical engineering, materials science, physics, or a similar discipline” and “would also have one to two years of experience in the field of LED packaging design.” Pet. 6. Petitioner additionally contends that “[m]ore education could substitute for experience, and vice versa.” Id. Petitioner further contends that “[t]his person would have been capable of understanding and applying the teachings of the ’539 patent and the prior-art references discussed herein,” and “[m]oreover, the prior art reflects the level of skill at the time of the claimed invention.” Id. (citing Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); Ex. 1102 ¶¶ 38–42). Patent Owner states that “solely for the purposes of this proceeding, Patent Owner and its technical expert employ the same level of skill in the art as Petitioners.” Prelim. Resp. 22. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’539 patent and the asserted prior art, and we apply it in our obviousness analysisbelow. See Okajima, 261 F.3d at 1355 (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no construction should be necessary to institute this petition.” Pet. 20. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 22. Having considered the record, we determine that, at this stage, no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“and “how” the references would have been combined. As the Petition explains, Krummacher discloses radiation scattering particles having a size range of 50 to 1000 nm. See Pet. 26 (citing Ex. 1107 ¶ 39). Petitioner further explains that a person of ordinary skill in the art would use Stokes teachings to further refine that size range to optimize the particle size to preferentially scatter blue light. See id. at 26–27. Petitioner further provides reasons, suggested in Stokes itself, why a person of ordinary skill would have made this modification to Krummacher. See id. at 27–28 (citing Ex. 1108, 7:17–26; Ex. 1102 ¶ 128). Petitioner provides sufficient evidence that such a particle size selection was within the level of skill in the art at the time of the invention. See Ex. 1102 ¶¶ 122–128, 140–144; Ex. 1108, 7:1– 17; Ex. 1124 ¶¶ 80–81. We note that we have reviewed the testimony of Patent Owner’s expert, Dr. Schubert, but this testimony does not, at this stage, diminish the weight we give to Petitioner’s expert. Thus, we find that Petitioner has shown sufficiently that the combination of Krummacher and Stokes accounts for this limitation and that a person of ordinary skill would have combined the references in the manner suggested with a reasonable expectation of success.” slip op. at 23
- 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, 584 U.S. 357, 371 (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 demonstrates a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’539 patent. Accordingly, we institute an inter partes review.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,614,539 - Cisco Systems, Inc. v. Lionra Technologies Ltd.All claims unpatentablePTAB · Oct 3, 2025 · IPR2024-00734 · APJ Steven M Amundson · IPR · Final written decision
Claims 1 and 3 are unpatentable as obvious over Gai, Yip, and Kwan; claims 15, 17, and 19–21 are unpatentable as obvious over those references and Georgiou.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“(1) claims 1 and 3 are unpatentable under § 103(a) because the claims would have been obvious over Gai, Yip, and Kwan; and (2) claims 15, 17, and 19–21 are unpatentable under § 103(a) because the claims would have been obvious over Gai, Yip, Kwan, and Georgiou. In summary:9” slip op. at 111
Patent outcomesUS 7,623,518 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,623,518 - PTAB · Sep 25, 2025 · IPR2025-00207 · APJ Gregg I Anderson · IPR · Director review
The Board instituted inter partes review of claims 1–7, 11–14, and 16–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Petitioner filed a request for Director Review of the Decision granting Patent Owner’s request for discretionary denial and denying institution (“Decision,” Paper 10) and Patent Owner filed an authorized response. See Paper 121 (“DR Request”); Paper 13 (“Patent Owner Response”). The Director granted the DR Request and referred the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other non-discretionary considerations, as appropriate.” Paper 14 (“Order Granting Director Review”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (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.”) We therefore institute inter partes review as to all of the challenged claims of the ’228 patent and all of the asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 584 U.S. 357, 364–65 (2018); 37 C.F.R. § 42.108 (a)” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted above, Patent Owner did not file a Preliminary Response and thus does not respond at this time. Petitioner’s description is consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). For the purpose of our Decision, we adopt Petitioner’s proposal.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“a “single caching agent,” which is recited in claim 1 here. ’1344 IPR, Paper 31 (“Final Written Decision”), 16–18. We concluded that a “‘single caching agent’ means ‘one caching agent for the processor, which may be formed from distributed portions.’” Id. at 18.” slip op. at 14
Claim constructioncites KSR · NautilusPatents in suitUS 8,984,228 - Visa Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 29, 2025 · IPR2024-00490 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 3–8, and 10–16 are unpatentable over Oborne or Oborne and Purves; claims 2, 9, and 17 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 74–79). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Inst. Dec. 15. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’973 patent and the asserted prior art of record.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on the full trial record, we maintain our determination in the Institution Decision that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. See Inst. Dec. 11.” slip op. at 11
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We have considered Petitioner’s arguments and Dr. Shamos’s testimony in light of Oborne’s disclosure, but find Patent Owner’s arguments and Dr. Malek’s responsive testimony to be more persuasive. We agree with Dr. Malek that, in Oborne, “device fingerprinting simply refers to identifying a device and the user associated with that device.” Ex. 2009 ¶ 111. Specifically, paragraph 26 of Oborne (quoted above) discloses authentication of a user, where “device fingerprinting” is utilized to verify a user’s identity where a user exclusively uses a client device such as a smartphone or laptop computer. Ex. 1011 ¶ 26 (emphasis added). The use of the device fingering for determining the device identity in order to authenticate a user is corroborated by the disclosures in paragraph 47 of Oborne which refer, in part, to the “<client_details” which can include a “<client_type>smartphone” and “client_fingerprint>font list, MAC address, memory size, memory.” Id. ¶ 47 (emphasis added). So, contrary to Petitioner’s arguments, we do not discern any disclosure in Oborne that “device fingerprinting” ties a token to a particular device. See, Ex. 1011 ¶¶ 26, 47. Rather, Oborne’s disclosures support Dr. Malek’s testimony that, contrary to Petitioner’s position, “device fingerprinting could be used to limit a token to a set of fingerprinted devices, such as each device belonging to the user.” Ex. 2009 ¶ 113. Moreover, Petitioner (and Dr. Shamos’s) statement that “the first device’s fingerprint would not match” the fingerprint for the second device merely provides a possible outcome of device fingerprinting, but does not explain why one of ordinary skill would be motivated to use device fingerprinting to make the “second device’s token . . . invalid in the first device,” or make the “token for the second device . . . a new credential,” or point to disclosures in Oborne that would support such a motivation. See Pet. 34–35; Ex. 1005 ¶ 228. Thus, we find that Petitioner’s contentions as to this limitation lack sufficient specificity to explain how Oborne teaches the limitation. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1377 (Fed. Cir. 2023) (“Ultimately, it is the petitioner’s burden to present a clear argument.”); Intelligent Bio-Sys. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’ ” (quoting 35 U.S.C. § 312(a)(3))). We further agree with Patent Owner that Oborne’s disclosure of “device fingerprinting” is limited, and does not describe how it would be implemented for a user with two devices. See PO Resp. 41–42. Therefore, Dr. Shamos’s cited Declaration testimony is “conclusory, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize the application of “an expansive and flexible approach” to the question of obviousness. KSR, 550 U.S. at 415. However, we “must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.” Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (emphases added) (internal quotations omitted). Although Stafford discloses that the key signatures may be copied from the display or delivered to the user via email, Petitioner does not expand upon whether the user would also copy the image from the display, whether the image would be provided via email as well, or provide any other explanation other than that the image credential would be provided with the scannable key signatures. Ex. 1012 ¶¶ 97, 99; Pet. 60. Although a credential image would presumably need to be retrieved or generated in some manner, and associated with the key signatures in some manner, Petitioner also does not sufficiently explain how this would work in the proposed combination, or how the user would transmit the scannable key signature to the recipient. Although proof of physical or bodily incorporation is not required, a satisfactory explanation of “how the combination of the . . . references [is] supposed to work” is necessary to support “a conclusion that a relevant skilled artisan would have been motivated to make the combination and reasonably expect success in doing so.” Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (finding no error where the Board required petitioner to explain how a person of ordinary skill in the art would have implemented petitioner’s proposed substitution). Petitioner fails to provide “a clear, evidence-supported account of the contemplated workings” of the proposed combination of Stafford and Purves. See Personal Web, 848 F.3d at 994.” slip op. at 62
Patent outcomesUS 11,329,973 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,329,973 - Visa Inc. v. Cortex MCP, Inc.Some claims unpatentablePTAB · Jul 29, 2025 · IPR2024-00489 · APJ Russell E Cass · IPR · Final written decision
Claims 1, 3–9, 11–18, and 20 are unpatentable over the stated obviousness grounds; claims 2, 10, 19, and 21 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“skill in the art at the time of the alleged invention “would typically have a bachelor’s degree in computer science, computer engineering, or a related field, with at least two years of work involving electronic payment systems, network authentication systems, or related areas.” Pet. 9 (citing Ex. 1005 ¶¶ 76–81). Petitioner further states that a person of ordinary skill “could have less education but significant professional experience in one or more of those fields.” Id. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art. Patent Owner states that it agrees with the level of ordinary skill set forth in our Institution Decision. PO Resp. 9. Based on the full trial record, we continue to adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’859 patent and the asserted prior art of record.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In our Institution Decision, we preliminarily determined that the term “OVER file” encompasses a virtual representation of one or more credentials, to be used for verification of those credentials. Inst. Dec. 11. We also explained that we did not need to determine for purposes of institution whether the term “OVER file” necessarily includes “tokens” as a general matter, or further elaborate on what additional characteristics might be required to qualify as an “OVER file.” Id. We also determined that Petitioner had made a sufficient showing for purposes of institution that Oborne’s tokens qualify as “OVER files.” Id. at 11, 24–27.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner
“After considering the full trial record, we adhere to the construction in our Institution Decision interpreting the claim language at issue “to require that an issuing agency ha[s] verified a virtual representation in an OVER file as being an official representation of the credential.” Inst. Dec. 13. In light of Patent Owner’s statements in its Sur-reply, we further clarify that this construction encompasses (1) considering the OVER file as the credential and verifying the OVER file, or (2) verifying a virtual representation of the credential contained within the OVER file.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. Other Terms The parties do not propose constructions for any other claim terms, and we determine that it is not necessary to provide an express interpretation of any other claim terms for purposes of this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 13
Patent outcomesUS 10,749,859 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,749,859
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.